Need some Major Advice on Using Part of a Famous Icon's Name for Domain Name

[Hershon]

What is the name of your state? California

I really would appreciate someones legal advice on the following concerning the use of an famous Icon's first or last name as part of a website domain name:

Hypothetically if they were still available to register, If I used names like: Dylan & Marilyn with something in front of them or behind them like: BestDylan.com, Dylanrules.com, MarilynMovieStar.com, NudeMarilyn.com, is there any infringement on this, as its still a name that many others have? Let's assume I registered the domain name to sell to someone else, and they the set up websites using that for Bob Dylan or Marilyn Monroe. Is that infringement/violation by them & can I still be legally responsible from the person who now owns the domain with the name I sold them? If not, what about me, selling them this from say Ebay and putting in my listing something like perfect for websites for Bob Dylan or Marilyn Monroe? Would I be liable then?

Now suppose it was someone like Houdini who is know as single stage name. Would that be infringement/violation using the same scenario as before with say the names HoudiniMagic.com or MagicHoudini.Com?

Lastly, for someone like Humphry Bogart using say CultBogart.com or BogartRules.com
would that be any different where the person is usually referred to by their last name even though they have a regular Acting Name?

I really appreciate your advice. Thanks for any help.

 

[quincy]

My best suggestion for you is to check out www.uspto.gov/web/offices/tac/notices/guide299.htm for information on domain names and registering them. Over 33,000,000 domain names have already been registered, and the ability of people to profit off the sale of domain names, a once-lucrative exercise, is not so great anymore. Your biggest challenge, therefore, is not what you can legally use or sell, but what is available to use or sell.

You can be sued for copyright infringement or trademark infringement if you, with bad-faith intent to profit, register or sell or use a domain name that is identical to or confusingly similar to or dilutive of an existing trademark or personal name. As for using a domain name with a dead movie star's name in it, you ordinarily would not have a problem, as there is no right of publicity left for a deceased person. Therefore, using Marilyn's name would be fine - as long as the domain name was not already registered and used as a identifier for Marilyn Monroe merchandise or, if it was registered but you used a similar one for a different non-confusing purpose, say as an identifier for Marilyn Brand pet products or something.

As for selling a domain name, once it is sold, you have no control over how it is used by the purchaser. If they purchase marilyn.com and use it to market Marilyn Monroe products, and it infringes on someone else's use, they are liable, not you. As an example, if I sell a book and the purchaser uses the pages of it to start an arson fire, I will not be arrested for arson.

Your problem, as I said, is not in the sale of a domain name, but in finding a domain name that is not already registered and in use.

But please wait for other posters, who have more knowledge in this area than I do, and who may offer corrections and/or additions to what I have posted.

As always, it is best to sit down with an IP attorney to go over with you carefully any business enterprise you may be thinking of, to ensure you do not waste time, money and energy developing a plan that turns out to be legally risky.

 

[Hershon]

Thanks for the info. I already have the names I want available so that's not a problem.
My basic concern which you said isn't a concern, is being liable for what the person then uses the web site domain for. He owns the name. The way I'm understanding what you're saying is, once I legally sell/transfer a domain name to someone else, I'm not legally responsible how they use the domain name. The one thing I'd appreciate you clarifying if you have a moment is, if: 1. Assuming I'm selling this on Ebay and I just use the words separately Marilyn Monroe to generate more people reading my auction, someone buys it and they then set up a domain on Marilyn Monroe and they are sued by say someone who holds a copyright or trademark on her name. Can the person who bought this from me, take legal action against me and say by putting the name Marilyn Monroe in the Auction heading, I led him to believe that the use of this was legal? 2. Taking this one step further, in my listing I write something like, perfect for Marilyn Monroe fans. Am I asking for trouble if the guy who purchases it, gets in trouble?
Thank you for your help. Honestly, if I could afford a lawyer, I'd do so.

 

[quincy]

Okay, I am going to attempt to answer your next questions, with the caveat that whatever I write should be checked out with an IP attorney for legal accuracy, and you should, again, wait for others with more knowledge than I to post with corrections and/or additions.

Basically, domain names are protected if they are used as a trademark, meeting the standards of a trademark, and they have achieved a certain distinction among consumers. By clicking on a particular site, for instance, a consumer is expecting a certain recognizable product or service based on the domain name.

You have your domain names already, you said, and I assume you have registered them either because you have used them already, or had good intent to use them.

If your domain names are the same or similar to ones currently in use, then the use of your domain names need to avoid infringement by not being used in a similar or confusing fashion, and the use of your domain names cannot weaken anyone else's registered mark. The first to use a particular domain name to identify a particular product or service generally has the most protection.

Using again the marilyn.com example you provided: Marilyn, first of all, is a pretty generic name and can refer to many women (and men). If someone is using a monroe.com domain name to market Marilyn Monroe memorabilia, however, your use of marilyn.com to market Marilyn Monroe memorabilia could potentially be considered infringement. If you marketed "Marilyn" pet products under marilyn.com, though, it generally wouldn't be considered infringement. If your marilyn.com was a porn site, it may or may not be considered infringement, but it could very well be considered a weakening or tarnishing of the monroe.com site or a Marilyn Monroe trademark (if any exists).

What you would need to do, to use Marilyn Monroe's name to market the sale of your domain name marilyn.com, is make sure that there are no Marilyn Monroe domain names that are similar to yours connected with Marilyn Monroe. If you find no similarly named domain names, you avoid the consumer confusion that would arise otherwise. If there is a marilynmonroe.com devoted to Marilyn Monroe, you could potentially run into trouble trying to sell marilyn.com as a possible Marilyn Monroe site. All of this is primarily about consumer confusion.

You could, potentially, I think, market marilyn.com as being "for all the Marilyns in your life - Monroe, Manson, Mom" or something along those lines. I think you avoid telling a purchaser that it can be used specifically for Marilyn Monroe that way, and it would be up to them to investigate the legalities of using marilyn.com for a Marilyn Monroe site. Listing possibilities, with Marilyn Monroe as just one possibility among many, could help you avoid a legal issue.

As for avoiding any issues over your domain name sale on eBay, I have heard too many horror stories about eBay purchasers and sellers to say you won't have problems. The best way to deal with any purchaser is tell them to check out domain names themselves, to see if their planned use will cause trouble.

Check out the Anti-Cybersquatting Act, which deals with domain names that use living people as part of the name.

Again, wait for others to post.

 

[Hershon]

Great minds think alike. That's basically what I did on descriptions I wrote like "All things Marilyn, etc. etc." just as you did. Well the only good thing is, I'd have to have some money in the first place, to be sued!

 

[davezan]

Let's assume I registered the domain name to sell to someone else, and they the set up websites using that for Bob Dylan or Marilyn Monroe. Is that infringement/violation by them & can I still be legally responsible from the person who now owns the domain with the name I sold them? If not, what about me, selling them this from say Ebay and putting in my listing something like perfect for websites for Bob Dylan or Marilyn Monroe? Would I be liable then?

http://www.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001125----000-.html

(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—

(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

 

[quincy]

I mentioned "bad faith intent" to Hershon, Dave, and even wrote "I assume you have registered them because you used them already, or had good intent to use them" - but then totally missed what you highlighted above about his registering with intent to sell the domain name. I, did, however, reference the Anti-Cybersquatting Act.

This is your special interest area of the law, I understand. Where were you on the 4th?

 

[davezan]

I actually wanted to answer yes to the OP's original question because I recall reading one
case of such a thing been done. Unfortunately I don't have an active link to it anymore, nor
do I recall the specifics like domain name, name of parties, etc.

However, one specific thing I did remember is that provision of ACPA which you mentioned
"generally" to the OP. Of course, it's very limited.

Besides, the OP or someone else might ask for a specific provision of an applicable law or
so. So there you go.

 

[quincy]

I just reviewed the "John Tesh" domain name dispute, which might be the one you were thinking of. It was brought against a domain name purchaser who registered celebrity-name domain names. Tesh had a tesh.com and this purchaser had registered JohnTesh.com, which Tesh then tried to purchase. Tesh was the first celebrity to put the Anti-Cybersquatting Protection Act to the test.

However, the ACPA deals primarily with the rights of living people to protect their names - but does not really address the problem of people that share the same name and it does not protect most dead people names. Marilyn.com, therefore, could be a legitimate domain name and not fall under the ACPA.

At any rate, those were just additional thoughts.

It is definitely good to have you around for these posts, because I am definitely not in my domain with these questions. Feel free to correct anything I say at any time!