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Trademark infringement & domain name registrations

Discussion in 'Copyright, Trademark, Patent Law' started by Kevin_Fields, May 13, 2006.

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  1. Kevin_Fields

    Kevin_Fields Law Topic Starter New Member

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    Hello! I am looking for information regarding trademark infringement and domain name registrations. I'm always interested in opinions, but I am more interested in information and prior cases/arbitration regarding these issues.

    Some background on the situation:

    Several years ago, an entertainer who was just starting their career approached me to develop a web site for them so that they could promote their career and apearances. Although the client was supposed to compensate financially to do develop a site posting news, information, appearance schedules and a fan community, the client was unable to do so. We verbally agreed that it would be acceptable for me to place 3rd party banner advertisements and affiliate links on the site in lieu of direct compensation from the client to pay for the costs of operating the site and my time and effort in continually updating and maintaining the site. It was also verbally agreed that I could also develop merchandise on the client's behalf using their name and likeness and that all profits made after applying it towards the operational cost of the site would be evenly split between us. The domain name for the site was registered using my client's stage name, and it continues to operate today.

    Around three years ago my client entered into an employment agreement with an employer to continue their entertainment services. The contract explicitly prevented my client from operating their own web site without the permission of the employer, and that such permission would not be granted at this time. The client and myself agreed that she would end her participation in the site and that it would operate solely as a fan site (although the client's participation was very infrequent and limited to updates of their appearance schedule - the client did not offer any direct participation into the daily operation of the site). My client's new employer was fully aware that this site existed and was now operating as a fan site - still using my client's stage name. At one point the new employer even directed fans of my client to my site via a link on the employer's web site.

    Last year my client started performing for their employer using their real name. Prior to this, I had registered a domain name using my client's real name with their knowledge. I did so for three reasons: to link the identity of my client's real name with their stage name, which had not previously been acknowledge but would eventually be; to protect tehir name from being used by a "cyber squatter"; and to specifically discourage such squatters from setting up websites and using altered images which attempted to defame my client's good name - a problem that we had been fighting online for several years. The new domain name is operated on the same web server and site as the previous domain, and both domain names access the same pages and links.

    My client's employer was made aware of the registration of the new domain name and its operation on the server within hours of my registering it by another party. Although there was some concern on their part that my client had directed or authorized this action (and thus violating their contract), after it was revealed that this was not the case, there was no further statements made towards my client or any actions taken.

    Until today, when my client's employer surprisingly sent me a "cease operations" letter. In it they demand that they have the exlusive rights to the trademark using my client's real name for entertainment related goods and services, they also claim:

    "We hereby notify you that your registration of the internet domain name violates our trademark rights, constitutes unfair competition, intentional trademark infringement, trademark dilution and false designation of origin. You are also intentionally trading on the
    goodwill of our company by using a trademark that is identical to ours, which will cause confusion and misdirect customers, and which is likely a breach of your domain name registration agreement. The registration of the Domain Name is unlawful and is a violation of the Anticybersquatting Consumer Protection Act. "

    The company is asking me to turn over the domain name to them - at my cost - and to also sign a legally binding document agreeing that I have stopped infringing on all of their copyrights and trademarks and that I will not do so in the future.

    NOW, through all of that, and what investigation I have been able to do sofar, here is what I've found:

    1) Although they claim to have a registered trademark using my client's real name, I sofar cannot find any evidence that such a trademark has been registered with the USPTO.

    2) Prior WIPO arbitratrion rulings have stated that a complaintant need not have registered a their name as trademark before the respondant registered the domain name in order to make a claim.

    3) That the complaintant need not have registered a trademark at all if they can show that their usage of the mark is common and sufficent enough to be declared a common law trademark

    4) That the complaintant, although recognized as a celebrity, may not necessiarly have a valid argument against the respondant if the complaintant has not used their name in assocation with endorcements, sales or trade of any kind.

    5) That the respondant may be able to demonstrate that they have a genuine and vested interested in the trademark used in a domain name and demonstrate good faith usage of the trademark.

    All that said, I feel that I may have a very slight upper hand here should the employer decide to pursue an arbitration hearing regarding the domain name. However, I am not so confident that the same advantage exists should they pursue a civil court case.

    As I said, opinions are appreciated, but pointing me to more relevent case law and arbitration rulings would certainly be even more helpful in educating me and helping me determine what the appropriate response and direction should be.

    And, perhaps a private referral to a competent lawyer experienced in such matters ;)

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