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View Full Version : Plagued by hard-nosed lawyer - any help appreciated



12Strong
08-04-2004, 05:58 PM
I am having a bit of a legal problem and was hoping that someone can help me here.

My boss decided that he would pay me to develop a fan site dedicated to a very up and coming motocross rider. Its purely a fan site, the only money we make is from the affiliate links at the bottom of the page. He registered several domain names pertaining to this guy's name and now we are being threatened with being sued if we don't take it down and hand over all the domains to his sports agent.
When the agent first contacted us, my boss (who is actually a really nice guy and was just doing this because he himself is a fan) decided that he would open negotiations because they really wanted the domains themselves and he didn't want to seem like an ogre.
All he wanted was to recoup his losses over the paying of me to develop the site and the money he paid for the domains.
The sports agent has decided that this was not good enough and wanted us to give them to him for free just because the domains contained his (the rider's)name.

Do we have any legal rights here? We were informed that the rider registered his name but the domain is not his legal name, it's a mixture with his nickname.

The sports agent was quite a jerk when we talked to him initially and demanded that we take the site down immediately. We obliged but left a small under construction page up to ensure our visitors would know it wasn't shut down completely. He responded by saying that we still hadn't done what he asked!

All we really want is to be given some sort of compensation from all this development - we even opffered him the entire site we had built if he wanted.
The worst part is, my boss owns 6-7 different versions of the domain name and they want them all for free!

Any suggestions?
Please note that we did not do this for any malicious reasons what so ever. We simply wanted to build a fan site to this amazing rider. Any help would be much appreciated - sorry for the long post.
Thanks

staceman
08-04-2004, 06:24 PM
This is a sticky situation and I am eager to hear a response. Normally I would say that if it were a name, then he necessarily couldn't claim rights to it. Another Stacey Cochran has already claimed the domain, www.staceycochran.com, which isn't me. Do I have the right to the name or does he? I'm apparently older, but he claimed it first. See the issues here. You may run into issues with use of a nickname that they may have copyrighted. The combination of the nickname and the name are more definitive as to who they reference. Man, this is a good question, I hope someone with more knowledge than I chimes in and I'll be watching for the answer.

Good Luck!

yowow
08-04-2004, 07:05 PM
I have somewhat similar problem like you but in my case i have additional word along the name of domain name and still they are tyring to take away my business and domain name.
Read my topic here
http://www.webproworld.com/viewtopic.php?t=25990

jestep
08-04-2004, 07:54 PM
Does the rider have the name registered as a trademark to himself?

Also, have you tried contacting the rider directly, this may be an easier way to solve the problem as you dont have to go through a lawyer. The rider who you speak of may be a completely reasonable person and this is just the lawyer beeing an A' Hole.

xmx
08-05-2004, 09:14 AM
Based on the experience of the past years I can tell you
that when it comes to domain names that refer to famous
persons, those persons always have the right to request
the transfer of the domain names htat exactly matches
their names.

It means that if the famous person name is XYZ the domain
name XYZ.com or XYZ.biz goes to him.

If you have the domain XYZfans.com, LovelyXYZ.com or
XYZworld.com it is different; normally you can keep it and
use it if you do not damage with false declarations the
image of XYZ.

staceman
08-05-2004, 10:40 AM
After reading Yowow's post, and having just applied for a trademark, I know that TM's are extremely specific. Applications must be filled out for each use of the trademark, including 1 application for the logo, 1 app for the name, etc... They are also specific to differenct classifications. For example, we are familiar with Trumps "You're Fired!" slogan. His people filed for trademarks on this, but one of teh contestants also filed for the trademark, but under a different classification of use. I also know of a pottery company that holds the trademark on that term, which may limit the use of the slogan on certain items as to not encroach on their trademark.

They will probably try to intimidate you on this, and may even hire counsel...an agent is not a lawyer, but he probably has one and will probably threaten a suit. Whether this suit has any merit is to be determined...

From another recent post
"Uniform Domain-Name Dispute-Resolution Policy

If you have any more problems check out:-

http://www.icann.org/udrp/udrp.htm

http://www.icann.org/udrp/udrp-rules-24oct99.htm"

12Strong
08-05-2004, 12:50 PM
Hi all, and thank you for answering me.
I was looking on the database of trademarks and the only trademark I found was for his legal birth name, with no mention of the rider's nickname.
And the trademark was for a clothing line, not anything to do with the web or even the sport! (I found that kind of funny) The trademark is registered to a family member of his (but not himself - wouldn't you want to own the trademark on your own name?)so I knew that it was the correct one.
The domain we have contains his real name as well as his nickname so I'm not sure what kind of rules apply their. Would the same trademark rules apply to www.tacobell-isgood.com?

I really don't think that appealing to the rider will do any good as he is pretty much unreachable and is only able to be contacted through his agent. Besides, if I listen to the rumours that are going around he is slowly turning into a bit of a jerk (their words not mine!)

We were contacted by a lawyer yesterday and he said we would receive something by registered mail so we have a feeling it's a cease and desist notice. We technically reside in Canada, will this still be applicable to us?

Well, if worse comes to worse we have already registered and setup another domain we are going to use if we have to. It includes just his nickname and the word fans. Hopefully we will be able to do this without any threat of legal action.

I don't want to name names, but sport agents suck!!!
Thank you again for all your responses, would still like to hear other's viewpoints!

12Strong
08-05-2004, 01:39 PM
Hope this post finds everyone in good spirits.

Well, it looks like they have brought out the big guns!
They have served us with a notice of legal action, saying that we have to hand over everything to them in 10 days or we will have a civil action case levelled against us for cyber piracy!

*sigh*

He says that they will seek to get the lost sales (weird cause I didn't know they were selling anything!) saying that we acted in bad faith and weren't dong anything with the domains (we were in the process of putting up the site but hadn't finished yet)

I really don't see any way out of this, I guess we might have to just hand them over or risk being sued for like a million dollars (like he needs it!)

again *sigh*

Thanks guys, anybody has any flashes of inspiration, let me know.

xmx
08-05-2004, 01:52 PM
Regarding trademarks it became famous the Harry Potter case, I think it was 2001 or 2002.
Time owned the TM and sent thousands of cease and desist letters to all the owners of domain names referred to the worldwide known character.
There were many young fans amongst the registrants of the domains that referred to Harry Potter and they ran their fanzine websites in good faith.
The fact arrived to the media (internet and not) and Time decided to stop its claims there.

yowow
08-05-2004, 02:06 PM
Hi
Thanks for the update and help guys
I am considering of giving up too :( the way i think is even though my website is becoming famous i simply can't spend my money on hungry lawyers. Instead i can spend money by getting the trademark for other similar venture I have. So what do you all think? But i am not goin to give up the domain name because they don't own the trademark for word "JOB" attached to it. If they want they can just go to icann spend $1500 and get it that way. What do you guys think? Btw i won't incure any fee rite if ICANN rules against me?
Btw can anybody tell me the basics of trademark process. I went to u.s. govt trademark website and got tons of information. TRADEMARK fee $355.00 non-refundable. Also their is search features for whethere a Trademark exist but is kind of confusing!!! Help Also should i a lawyer or need one to do the trademark? any other help is welcome
THANKS

jestep
08-05-2004, 02:09 PM
Try this article:

http://www.netpolicy.com/theysoldthenet.html

12Strong
08-05-2004, 06:41 PM
Thank you all for everyone's input!

I believe we have reached a quasi-acceptable resolution to this.
Since we really don't want to get sued and we have been conversing with a few lawyers. We have decided to sell them the domains with his name in them (in total or in part) to him for the cost we incurred while buying them (which was about $1000 CAN since we had to buy two off of REAL cyber squatters)

We in return will get full permission to operate a fan based site using a domain that has only his nickname and the word "fans".
his way we can use the kick ass site I made and not have to pay for his leagl expenses!
*whew*

TLDTrader.com
08-06-2004, 01:16 PM
Maybe you should take a look at this :)

Carmen Electra won back CarmenElectra.com even when her real name is Tara Leigh Patrick.

Here's the article:

http://www.cnn.com/2004/TECH/internet/01/16/electra.domain.ap/index.html

sbeco
08-06-2004, 04:07 PM
mdsone,

You say you bought the domains from REAL cybersquatters, so I'm wondering if those cybersquatters were aware that the domain names were trademarked, or potentially would have legal claims made against you when you tried to use them? If they were aware of these potential legal challenges, I would think that knowingly selling those names, trademarked or not, would be a "no no."

I'm just thinking of another way for you to recoup your expenses.

If the owner of the trademarked name refuses to buy the domain names at your price, you may have the option of getting your money back from the REAL cybersquatters who knowingly put you at risk of a law suit.

I would imagine that this motocross rider probably wanted to own the domain names you purchased but refused to be "blackmailed" by the REAL cybersquatters for an outrageous price. Then you came along and purchased them, and now you find yourself in a jam. This may be the case, I don't know.

I would hire a lawyer to find out if there is any way you can demand your money back from the REAL cybersquatters, especially if they were fully aware of the trademark issues involved.

You may want to ask the pesky agent about this to see if he has a "provable history" with the REAL cybersquatters. If the motocrosser has already been in contact with the REAL cybersquatters, I would imagine that would help your case.

If the MX'er has already refused to buy the domain names from the REAL cybersquatters, I assume he will do the same to you and refuse to accept your price.

Just a thought.

Then again, if you or your boss were already aware of potential legal trouble BEFORE you bought the names...