Celebrity Domain - Getting threats from there attorneys?!

About a year ago I got a small celebrity's domain name for purposes of a fan-site. Today, to my shock, I received an email saying I HAVE to give the domain name over to the rightful owner for free basically?..

In domains surely you can just get any domain you want? as long as it has no trademark names in it?
The domain I have is just a name.. if what this law firm is saying is true, then how on earth do people succeeded in the domain selling business?!
I would preferably sell this, or keep it as it is. What do you advise i do?


The pdf with full information is bellow..
http://madfrat.com/site/helpme/

REALLY WILL APPEACIATE ANY INFORMATION ON WHAT I CAN DO TO KEEP THIS DOMAIN.

 

I have hundreds of similar domain names of celebrities. If I received a letter like that one I would turn the domain name over and move on.

I see no way you have legal rights to use that name in the manner you appear to be using it. I see that the .net and .org are in use as fan sites. They probably got letters recently as well. I do not see how you can make an effective argument that you have any legal right to use that name.

This is a business decision more than a legal one. If that domain is not making you thousands of dollars a year then I'd walk away.

** I would also recommend you either remove or redact your personal information off of the the letter you posted sent from the law firm. You probably do not want to expose your personal information.

 

Trademark law concerning domain names raises questions about intent. If you use the domain in bad faith (ex: speak against the person or acting as the trademark owner), then you are in heavy violation of trademark laws. However if you use the domain in good faith (ex: fan site), then your violation of the law is questionable/minimal. If you are using the domain in bad faith, I suggest you stop immediately and close the violating operation.

If it is requested that you transfer the domain, and you feel that transferring the domain would be your best action, then you should offer to sell to the domain to them. The amount should be equal to or near the cost of the domain. This is to cover your losses, and not for gaining a profit.

 

Almost everything about this post is wrong.

 

Hey
There is a scam going around and how it works is you get a email and they demand you hand over the domain name or you will be charged.

If someone wants there domain name back it will be ican and its a free service so if anyone says my lawyer or I will take you to court its not true because its a free service to anyone that thinks someone has stole there domain name you just file your case to them so be fooled by this.

 

I do not intend to give incorrect information, nor do I believe what I stated is false as I can back up my statements.

According to Paragraph 3 of "Protection of Celebrities Names and Trade Marks under the ICANN Uniform Domain Name Dispute Resolution Policy" by Igor Motsnyi as found in the Murdoch University Electronic Journal of Law:

If you are questioning my view of "rights or legitimate interests" as in my mentioned examples of bad faith or my mention of a fan site as good faith:

If you are questioning the relationship between celebrity names and trademarks, though it is a gray area, this may help you see how WIPO relates the two:

If your concern is about my suggestion to sell the domain to the trademark owner to cover costs and not for profit if the domain owner believed that transferring would be the best action, according to the UDRP:

I believe that it is important when dealing with legal issues to give correct, well-supported information and avoid contradicting such. I hope the information above will help you, domain owners, and trademark owners better understand domain issues like the one in question.

 

I took issue with two points. The notion that a fan site was somehow a good faith usage (and thus proper) and the suggestion to offer to sell the domain for 'transfer' fees (whatever those are), once you decide to give it to them. Here is my thinking:

1. Your rights to use the domain name are not dependent on whether your speak positively or negatively about the trademark in question. You are confusing the issues intent/fair use/bad faith. Nothing you cited mentions that a "fan site" is some sort of good faith usage. The are two issues at play, trademark law and domain name rules. You seem to focus on domain name, we can look at that. You pointed out the three issues and none deal with concept of a fan site being good faith usage.


2. With regard to offering to sell the domain name. You're correct that offering to sell the domain name for a profit is a mistake, but I think your suggestion of offering to sell it for the minimal or non-existent transfer cost is just a bad business move for two reasons. First, if you are giving up the name because you fear your use is improper legally it is silly to try and recoup minimal fees - just give the name up. Second, while you can't offer the domain name for a profit you can certainly sell it for one if an offer comes - and I would do that in other cases. The thing I would not do is make the affirmative move of offering to sell the name to the trademark owner with no real financial or legal benefit being offered by them in exchange.

(lastly, I would probably do any communicating through an attorney so the communication itself would not be evidence.)

 

Due to trademark laws varying by border and the thread being about jurisdiction over domain names, my references to trademark law is based on WIPO's interpretation of it based on the UDRP.

I did not completely disqualify a fan site as a violation, however I stated that it would be questionable (which means may or may not be) as a fan site can be used commerically. As written by Richard J. Slawson of Going Legal:

Selling the domain to another party besides the trademark owner for profit could be a violation of numerous cybersquatting laws if the domain owner already knew of the trademark infringement. While just giving the domain to the trademark owner is fine, offering to sell the domain does not hurt in a situation where the domain owner is planning to give it up anyway, has nothing to lose for asking, and I think would be considered a fair deal by the trademark owner who would have had to pay that price if they were to register the domain anyway.

 

Many entertainers have their names trademarked, so it's not like if you own one you can't be held accountable. That's pretty much old news.
Make sure it's legit first, ask for a phone conversation.

 

Welcome to the real world, where we're all accountable for our actions.

While it's arguably reasonable to ask to be reimbursed the registration fee, not
all celebrities would do that anyway. Neither do they have to be nice about it,
especially the really unreasonable ones who might have the "law" on their side
nonetheless.

Then again, I'd imagine some people register celebrities' names to make money
off them somehow while a few indeed make non-commercial fan sites. YMMV.

 

I've got some mixed opinions there, not sure which one to go with.

To be honest, I bought the domain name to sell it, I put up a fansite until i got some offers in.
But I was not expecting this nor did i think it was possible to get threatened in this manner.

Would it be a stupid legal move to ask for money for the domain?

The actual domain name is her showbiz name, not her legal name.. she is a low rate dancer who's got her fame from being friends with Miley Cyrus.

 

I also receive many mails regarding same things! because they target only for marketing purpose

 

Yes thats right, its just a bullshit... so, just don't worry....goodluck

 

Yea, i had a similar email and i googled it and turned out to be a scam.

 

I believe this to be a real law firm, there emails match-up to there page 4 ranked website. The firm has 500 attorneys. Don't really want to get on the wrong side of them..

 

It could be legit, or it could be a scam. You have to do that leg work and see who you are dealing with, none of us can tell you if it's an actual attorney or not.
But...I do know that performers, actors, musicians...stage name or not, DO trademark their names. It only makes perfect sense.
Check and see if the the name is trademarked. Should be easy enough and go from there.

 

I'm not asking if the law firm is legit or not, iknow it is a real firm.
I have searched her name and it is not trademarked.

 

It may be bullshit. But it can also be bullshit to tell others not to worry about
something they might be held liable for, considering you're not affected by it.

It's been said a gazillion times, but trademarks aren't required to be registered
to exist. If the celebrity indeed used a real lawfirm, then there is a possibility
of demonstrating what's called a common law trademark. (which you can look
up online...)

If that celebrity has used her name to make money, then chances are she has
established a trademark right to it. Another problem, like I said earlier, is some
treat asking for money (regardless of reason) as proof of a "bad faith" intent to
"profit" from their mark.

It really depends on who you're dealing with. Truth is, only a lawyer with real-
world experience can tell you once all and any facts are presented to him/her.

Oh, and be careful what you post online. If the other side's smart, they might
just find this thread.

 

Then fight it out in court. If they are intent on taking it or suing you, you have no choice except to get an attorney and protect your property.
It's kind of simple.
Give it to them, or hire someone to keep it.

 

You have to be very careful about what you post on the net - everything can be used in court. You just admitted to a bad faith registration. Asking for money would also be seen as bad faith.

As stated by others, give them the domain. It's not worth a legal fight - one which could easily run into six figures. A UDRP action is only one step they could take, they could skip it and sue you.

I think your chances of winning in court are close to zero. If you want to ask for your registration fee (I wouldn't) then I would still immediately turn over the domain in the event they say no.