Domain Copyright Infringement

26 replies
Hey,

I'm currently working with a famous punk rock band on getting back their domain name (a fan registered it first with their name in the title), and I need some of your advice here.

What would be your approach towards this, guys? We've already sent multiple emails, but there's no response. The website is old, and it's possible that nobody is even taking care of it.

Can we send a Cease and Desist letter to the domain registrar or hosting provider to close down the website, and give back the domain, based on legal claims?

Thanks!
#copyright #domain #infringement
  • Profile picture of the author ONE SEO
    Get the nameBAND.com

    Get the name.net/org

    Right now as an expert on WIPO you have no chance, unless they contact you with a sell offer.

    The fact is anyone can own a name.

    Now if you want to hire a slime bag USA lawyer he can file and the moron judges in US courts that are clueless on WIPO case law will say oh yeah, you deserve the name.

    So a real domain name court which is WIPO you lose.

    If you find a slime bag USA attorney to ignore REAL DOMAIN NAME LAW you probably win.

    But in US courts you need service.

    Now if you're not in the USA, then you need to find someone that knows domain case law in your country, but WIPO is the main forum and unless they deceive the public and say they're the band or unless they offer it to you for dough.

    Nothing wrong says WIPO.
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  • Profile picture of the author RobinInTexas
    If they don't have a trademark registered, the fan probably can keep the domain, you can watch to see if it drops.

    Have them register the trademark ASAP regardless. Once the trademark is registered, no one else can get the domain.

    In the meantime register a variation of the name and use that.

    I am not a lawyer, in fact have no legal training whatsoever. I don't even play a lawyer on tv.
    In no event will I be liable for any loss or damage including without limitation, indirect or consequential loss or damage, or any loss or damage whatsoever arising from loss of data or profits arising out of, or in connection with, the use of my opinion. Taking legal advice from anyone via the internet is a bad idea, you should do your own research and consult proper legal counsel before embarking on anything after breakfast.
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  • Profile picture of the author TLondon
    Thanks for the input!

    They've been around for a bit, are pretty well known, and I'm sure they registered the trademark (I will confirm this in a bit), they just didn't have anybody to consult them on domain registration.

    From what I gathered based on the information below, it seems that we're legally entitled for that domain name, the only problem is - nobody wants to sue, as it's too much trouble. Is it possible to send a C&D letter to host provider/registrar and ask them to re-register the domain/close the website/etc? At present, this website stands as #1 in SERPs, and that's obviously not okay.

    Any of these ring true?
    Web Site Legal Issues (BitLaw)
    Rights Granted Under Copyright Law (BitLaw)
    Domain Name Disputes (BitLaw)
    What Musicians Should Know About Trademark | IAtv | Indie Ambassador

    I'm still looking for the actual legal material on this...
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  • Copyright law may not protect a URL. Trademark law however may protect a URL.

    If the domain name has your "registered trademark" name in it, you may have a case.

    If the URL was registered with the purpose of using your trademarked name for gain, financially, building a list, etc, you may have a case.

    If the person has no legitimate purpose for owning that domain name other than riding on the success of a popular bands name, you may have a case.

    If you don't have a Lawyer and sufficient funds to pursue this legally, you don't have a case.

    If as you say "nobody wants to sue, as it's too much trouble", then it sounds as if you are stuck with the DIY approach. send C&D letters, etc.
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    • Profile picture of the author Ardoris
      Originally Posted by stoltingmediagroup View Post

      If the URL was registered with the purpose of using your trademarked name for gain, financially, building a list, etc, you may have a case.

      If the person has no legitimate purpose for owning that domain name other than riding on the success of a popular bands name, you may have a case.
      These!
      Do you see any ads?
      Is the site monetized?
      If yes, then, you have good chance of getting the domain.

      If it's fan site and not monetized, then, you don't have a case.

      However, you need lawyer and money to proceed.
      WIPO fee is $1.5K (1 Panelist) or $4K (3 Panelists)
      Plus $ for the lawyer fee.
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  • Profile picture of the author KyleMallory
    Like Alexa said, you need to talk to a lawyer. That doesn't mean you need to sue, but a lawyer can send c&d letters to the owner and the registrar which may be enough if you provide proof of trademark. Companies like to avoid lawsuits, so it might scare them into complying if they're in the wrong.

    Then again, I'm not a lawyer so you really shouldn't trust anything I said
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  • Profile picture of the author Melkur
    As Alexa and others say, you really need an Intellectual Property lawyer who's familiar with the law as it stands in the relevant jurisdiction.

    That said, and bearing in mind that I'm not a lawyer, and I don't know where the domain is registered etc., and it's quite some time since I've engaged in a domain dispute from either side of the fence, isn't it possible that there may be some "goodwill" in the domain name, effectively making the possibility of an "unregistered trademark" as I *think* it is / was called here in the UK, even if the mark wasn't registered? Might be a jumping off point for a little research for you, anyway.

    Also, taking a slightly oblique approach, if the fan site's content includes anything that belongs to your client - images, sounds,...? - and it's hosted in the US, perhaps you could approach the host with a DMCA notice and takedown letter? That should get the offending material removed, but not the whole site, but it might inconvenience the fan and send a message that you're serious.
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  • Profile picture of the author serryjw
    TLONDON...First, stop asking for legal input on an open forum. There are about 6 Domain attorneys. John BerryHill is very active in the community. IF they registered the domain to ride on the bands coattails, that is illegal in the USA. The domain was registered in 'bad faith' John will talk to you for free OR he will refer you. Find out what the band's options are, then decide
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    • Profile picture of the author stan22
      Definitely, consult J. B.
      BTW, be careful of engaging in reverse domain hijacking.
      Finally, make sure the people you work for (the band) are worth your trust, and are not hiding anything from you...
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      • Profile picture of the author Nuno
        Hosting provider / domain registrar have no power to "re-register" the domain as you mentioned. Only through WIPO , NAF (National Arbitration Forum) or Court can it be delivered.
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  • Profile picture of the author ronrule
    Is the band a brand?

    (If you don't know what I mean by this question, you're not the guy to be handling this for your client - THEY, not their web guy, need to pursue it through a UDRP claim).

    If they don't have a trademark, they have no legal claim to the domain.

    If they DO have a trademark, but the original domain registration date pre-dates their band name, they have no legal claim to the domain.

    If they DO have a trademark, but the site is about something completely unrelated to their band, music, etc., they have no legal claim to the domain.

    If they're a "household name", they have no actual legal claim but they CAN request a panel of arbitrators via a UDRP claim make a decision on the issue. This will cost a little under $3,000 and there is no guarantee they will side in your favor. If it were me, I would argue that the owner registered it with the sole intent of selling it back to us and not having control of it would cause market confusion, but those things have to be true in order for that claim to stand.

    Or in other words ... stop trying to find a way to take it simply because you think you "deserve it".

    If you don't have your legal basis covered, if the owner wants a couple thousand bucks just pay him and be done with it. I've had to do this for some MAJOR brands - brands that are household names. The squatters know the rules... they know what arbitration costs, and they conveniently price the domains just below that. Since there are no guarantees with arbitration, it's cheaper just to pay them, and the transfer happens faster.

    Don't send him threats (that's actually the worst thing you can do - he has no obligation to respond to them). ASK him what his intentions are and what it would take to acquire it. Get him to give you a dollar figure - because once he does, he's identified himself as a squatter and now you know your course of action.
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  • Profile picture of the author sbucciarel
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    Originally Posted by TLondon View Post

    Hey,

    I'm currently working with a famous punk rock band on getting back their domain name (a fan registered it first with their name in the title), and I need some of your advice here.

    What would be your approach towards this, guys? We've already sent multiple emails, but there's no response. The website is old, and it's possible that nobody is even taking care of it.

    Can we send a Cease and Desist letter to the domain registrar or hosting provider to close down the website, and give back the domain, based on legal claims?

    Thanks!
    Cybersquatting - Wikipedia, the free encyclopedia
    This may be of some help
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  • Profile picture of the author salegurus
    Sorry but the Band can't be that "Famous" if they don't want to bother with legal action to protect their brand name?

    PS. If all you want is opinion then that's great, if you're looking for legal advice don't ask on an IM forum...
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  • Profile picture of the author webcosmo
    I think it`s too much trouble, and unless they want to hand you the domain, you have no case against them, until they get bored.
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  • Profile picture of the author TLondon
    Thanks for all the input, some of it was very helpful. I still, however, don't have a definite answer. I'm going to clarify some of the confusion below.

    - The band is an LLC, but their name isn't trademarked.
    - The website is a fansite, with pictures and names of the band members, and it has Adsense in the sidebar. It hasn't been updated since 2012, and it's on the first position in SERPS for band's keyword - owner is definitely making money, and he/she doesn't respond to emails.
    ^ Is there a case?
    - I'm not representing the band in anyway; I know the people, and I'm just inquiring on their behalf. Their manager has been dealing with this for a while, but he doesn't seem to make much progress.
    - This is a punk rock band. If you like punk rock, you'll know them. They've been around for 14 years, based in the US.

    Thanks for all the help guys!

    Oh, and of course the band "deserves" it! It's their name, they came up with it, and its their music that makes the name popular. The fansite is just a parasite at this point, with no production value whatsoever.
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    • Profile picture of the author Kay King
      If they have not trademarked the name, they probably don't have exclusive rights to it. That is a TRADEMARK issue. "Deserve" isn't a legal term.

      However, - they MIGHT be able to go after the website if they are publishing photos owned/published by the band without gaining permission to use the images. That would come under copyright and might work.

      They NEED to talk to a lawyer. Won't take much time - a consult won't cost much money. If they are going to remain a band they need to learn how to run their band as a business - including protecting their name and images.
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  • Profile picture of the author ronrule
    No trademark, no case.
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    • Profile picture of the author davezan
      Originally Posted by TLondon View Post

      Is there a case?
      Only a lawyer experienced in your issue can really tell you, especially after checking out any
      and all specifics (i.e. actual names, registration dates) of the situation. This thing has gone
      both ways so there's hardly any consistency.

      While you can send a C&D or similar to the registrar, they can also reply back asking for a
      court order or a filed action under the "uniform dispute resolution policy". Both items, though,
      require at least proving trademark rights. Afterwards, the registrar won't do anything until you
      send what they ask.

      As some lawyers I know would say: it's not what you know, but what you can prove.

      If the registrar is hosting the domain name's website, though, then try what Kay King said.
      Still, you'll likely need a lawyer for that lest you might do more harm than good.

      Originally Posted by ronrule View Post

      No trademark, no case.
      'Nuff said.
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    • Profile picture of the author vouch
      Originally Posted by ronrule View Post

      No trademark, no case.
      Sorry for opening this can of worms again, but that is not exactly true. And as much as it pains me to say this. You don't need a trademark. You could have established something called common law rights. Look it up. In this case that this band has been around for over 14 years, there might be something. In addition, the fan obviously knew of the band when they registered, which might also point to bad faith registration.

      But beware! It might not be so prudent to go after a fan. It could backfire and have others backlash against the band. This could become a PR nightmare (especially with the power of social media today). These things have happened in the past. Might be wise to try to make a deal with the fan. Throw them some free tickets, swag, etc. Or just find another domain name.

      I don't blame you for asking your question because it helps others with similar problems to get ideas or give a sense of direction. But like others have said before, best bet is to get a lawyer in this field. And one of the best is John Berryhill. The guy is a beast when it comes to this stuff. Any how, did you speak to anyone or get some head way? Inquiring minds want to know.
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      • Profile picture of the author agmccall
        This may sound a bit simple

        You said it was a fan that bought the name and that the site is old and not being updated. So, the "fan" probably grew up and moved on. You said you sent a few emails.

        So why not just invest in a private investigator, find the person, and ask them for the name. A private investigator who uses the internet can probably get you a name and phone number for a few hundred bucks. You might even be able to get this information on your own with a bit of legwork

        Like you said the site is not being maintained so the owner just might give it up

        al
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    • Profile picture of the author Alexa Smith
      Banned
      Originally Posted by ronrule View Post

      No trademark, no case.
      Doesn't necessarily follow, Ron.

      Trademarks can be held by courts to exist "constructively", i.e. without ever having been registered per se, and these are exactly the sort of facts over which they sometimes are.

      http://www.warriorforum.com/main-int...al-advice.html
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      • Profile picture of the author ronrule
        Originally Posted by Alexa Smith View Post

        Doesn't necessarily follow, Ron.

        Trademarks can be held by courts to exist "constructively", i.e. without ever having been registered per se, and these are exactly the sort of facts over which they sometimes are.

        http://www.warriorforum.com/main-int...al-advice.html
        This isn't Kleenex or Band Aid ... it's an unknown garage band that (allegedly) became big after the domain was registered. Not really relevant.

        If it were my domain to pursue, I would argue that the registration falls under "permissive use" during the early days of the band (given that the sole point of the domain registration was to create a website centered around that band, for the enjoyment of band members and other fans). Since the webmaster is no longer interested or reachable, the property should be transferred. But that's outside the scope of the UDRP.

        This would make it more similar to complaints that companies file against their web hosts or web designers if the host or designer registered the domain in their own name instead of the client's. That's not a trademark dispute, it's small claims.

        As for the linked thread, I disagree ... there's a difference between legal experiences other members have had and "legal opinion". If someone has had an experience, that experience (and outcome) may be relevant to someone else. It obviously doesn't circumvent the need for proper counsel, but it can help you determine what your options are and if it's worth your time and money to retain it. Lawyers don't magically "know everything about the law" - you're paying for research and representation. I've never taken something to a lawyer without presenting self-researched case law examples, which spares my own relevant case law examples, which spares me the expense of paying them to research it - knowing what you're getting into going in has been the difference between $60K legal bills and $14k.
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  • Profile picture of the author HeySal
    Doesn't sound to me like THEY are trademarked under the circumstances. Is it possible to just add a word to the URL and register something similar? Depending on the circumstances of the band's "ownership" of their name, they might have rights to do that - and in that case a fan club website might actually be more of a help than a nuisance.

    You said they "might" have a trademark right? Um........do you think maybe that is your best course of first action is to figure out whether they do or don't have a right to use their name as "trademarked"?

    You do realize that if they ARE trademarked and the site you are worried about is infringement - if they DON'T act against it, they can lose their trademark?

    I'm sorry. I don't feel you are the one to be handling this issue for them. It sounds like you haven't the first faintest clue of what you are doing and you might end up getting sued from their end if your inexperience costs them money or fame.
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  • Profile picture of the author sbucciarel
    Banned
    Easiest route to go would be to file a UDRP. It isn't copyright infringement. It's cybersquatting.
    Uniform Domain-Name Dispute-Resolution Policy - Wikipedia, the free encyclopedia
    https://www.icann.org/resources/page...-2012-02-25-en
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    • Profile picture of the author ronrule
      Originally Posted by sbucciarel View Post

      Easiest route to go would be to file a UDRP. It isn't copyright infringement. It's cybersquatting.
      Uniform Domain-Name Dispute-Resolution Policy - Wikipedia, the free encyclopedia
      https://www.icann.org/resources/page...-2012-02-25-en
      It's only "squatting" if the owner of the domain registered a known trademark with the intent to sell. Read the thread, that isn't at all what happened here... no trademark, no intent to sell.
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      • Profile picture of the author Teravel
        Originally Posted by TLondon View Post

        Can we send a Cease and Desist letter to the domain registrar or hosting provider to close down the website, and give back the domain, based on legal claims?
        Originally Posted by TLondon View Post

        Thanks for all the input, some of it was very helpful. I still, however, don't have a definite answer.

        These two messages should be the first clue to your answer. You are asking INTERNET MARKETERS for LEGAL ADVICE. Seriously... Ask a lawyer instead of a group that can only Guess at what you should actually do.

        Stop wasting your time, and ours, and contact a lawyer.
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