Can I be forced to transfer a domain I legally own if I've made it inactive to satisfy someone with a claim to it?I purchased a domain for a friend who wanted a celebrity message forum to promote a particular celeb. The inhouse counsel for this celeb claims it's illegal to own this because the celeb's full name is contained within the domain name. We've since made the domain inactive so that not only the person with the forum can't use it but noone can purchase it. Now the lawyer insists the domain be transferred immediately to them and unlocked. I would propose that since we paid for it that we keep it inactive for the year we own it then would willingly transfer/unlock for purchase just before that period ends. I don't see why we should legally be forced to pay for a domain for this celeb if we aren't using it since there concern was someone using it for the wrong reason- i.e. to promote themselves Attorney answers (3)Reputation Level 20
Answered over 2 years ago.
Intellectual Property Law Attorney in Los Angeles, CA.
You have spent very little money and time obtaining this domain name incorporating this celebrity's name, and the advice from the other responders is good - don't pick this fight. The risks of cyberquatting on a celebrity's trademark and publicity rights are huge compared to be small small amount you paid for this domain name, and you seem to be admitting that you want to sell this domain name rights for a profit, which is a violation of the celebrity's rights. Under the cyberquatting and publicity laws, only the celebrity has the right to profit from their names used as domain names. There are exceptions to this rule for 1st amendment uses by legitimate critics of the celebrities, but you have said nothing to indicate that your intended uses are anything but promotional in derogation of the celebrity's own rights. Remember that celebrities are much better positioned than you are to fight this fight.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship. 5 people marked this answer as good
Daniel Nathan Ballard, licensed in California
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Reputation Level 18
Answered over 2 years ago.
Intellectual Property Law Attorney in Sacramento, CA.
Registering, in bad faith, a domain name that is identical or confusingly similar to someone else's trademark violates federal trademark law and the domain name registration agreement entered into by the registrant and his or her registrar. The registration is wrongful even if no content is published on the corresponding web page.
Celebrity names can be, and very often are, trademarks. Assuming that the domain name you registered is the same as, or confusingly similar to, the celebrity's name and you registered the domain name in "bad faith" (See http://tr.im/quRb at Section 1125(d)(1)(B) ) then, yes, you can be forced to transfer the domain name's registration to the owner of the celebrity's trademark (likely a company formed by the celebrity). You are due no compensation for the registration and, in fact, may be liable to the trademark owner for between $1,000 and $100,000. Oftentimes, however, another's trademark may lawfully be used as part of a domain name. You need to speak with a trademark attorney to get his or her take on the matter. I caution you against publishing any specific information about this dispute in public (such as this website). Good luck. 3 people marked this answer as good
Notice: The below is for educational and informational purposes only, is not a reflection on or a representation of any views or opinions held by my employer, and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.
Mr. Ballard has given some good advice. It is also possible, and faster and less costly than an Anti-Cybersquatting claim, for the celebrity to file a UDRP proceeding with an arbitration service such as WIPO or NAF, and seek transfer of the domain name in that manner. The fact that you state you propose to keep it locked for a year and then "would willingly transfer/unlock for purchase" the domain name, gives the impression that you intend to sell it to the highest bidder. Such a statement can be viewed as an acknowledgment that you do not have legitimate rights to the domain name and registered and used the domain name in bad faith (two of the three elements required for a UDRP complaint). I agree with Mr. Ballard and caution you to not publish any further information specific to your particular case on this site or in other public forums. You should speak to an intellectual property attorney if you wish to pursue this matter further. 1 person marked this answer as good
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