Asked 12 months ago - Farmington, MI
FlagI've got a number of domain names with inactive websites that referto specific university and pro sports teams, for example MichiganStateSpartansFanGear.com and DetroitTigersFanGear.com. Are there any issues with copyright, intellectual property, etc? Would they have any legal standing to request that a website using these domain names be taken down?
Yes, there definitely are IP issues you'll need to address. Virtually all professional sports teams, and most collegiate teams these days, maintain strong trademark protection over the use of their names. A trademark holder can seek to have a domain name containing the trademark transferred to the trademark holder through ICANN proceedings and may even opt to sue for trademark infringement, unfair competition, and violation and the federal Anti-cybersquatting Consumer Protection Act, all of which allow the recovery of damages and potentially attorney's fees from the domain name holder.
You should consult a trademark/internet lawyer in your area before moving forward with any of these domain names.
While I cannot give you legal advice in this forum, you should speak with an IP attorney before proceeding further. Yes, there can be trademark, copyright, and unfair competition issues depending on how the names are used. Also, an owner of a trademark can institute an ICANN action to try to get the domain name transferred because of improper usage. The issue, however, is complex and an attorney can explain it to you. See http://www.icann.org/en/help/dndr.
As my colleagues note, yes, just the act of registering a domain name may be unlawful and subject you to financial liability.
The relevant law is the Anti-Cybersquatting Prevention Act:
15 USC 1125(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the owner of a mark … if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark … and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by [other statutes]. …
(1)(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. …
(3) The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable.
15 USC 1117(d) Statutory damages for violation of section 1125(d)(1)
In a case involving a violation of section 1125 (d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
So not only can the Universities and sports teams sue you to ask the Court to the transfer to them the domain names that you registered, they can also chose to not even try to prove their damages and can simply ask the Court to award them $1,000 per domain name registration. This is tactically important because a defendant [in this case you] is not entitled to a jury trial when the plaintiff only seeks statutory relief [in this case the domain name transfers and statutory minimum damages]. Which means the judge decides the whole shooting match which dramatically reduces the cost of suit -- and so there's more likelihood the suit will be filed.
In short, if you want to warehouse domain names for resale that include the names and/or trademarks owned by others then you need to work closely with your trademark attorney to reduce the risk of being sued.
Yes you could have potential trademark infringement issues here. Most sports teams have their logos/marks federally registered with the USPTO. You can check if a trademark is registered by searching the USPTO website online, via its online search engine TESS (http://tess2.uspto.gov/bin/gate.exe?f=tess&stat...)
As a possible option, most of collegiate/national sport teams provide licensing opportunities for individuals wanting to sell products using their trademarks. You'll need to find the contact information to their licensing department in order to obtain a license to sell/use their mark or products with their mark on them. It's typically an application and quality review process and approval isn't guaranteed. Hope this helps.
AttorneySam.com
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