Cyber Piracy Law: Domain Names and Right of Privacy
Causes of action for the use of someone’s famous name are CyberPiracy, unfair competition and false advertising in the nature of false endorsement which is essentially the federal equivalent of a state violation of the right of publicity. Most states have their own right of publicity and right of privacy statutes.
The right of publicity is where one who appropriates the commercial value of a person’s identity by using without consent the person’s name, likeness, or other indicia of identity for purposes of trade is subject to liability.
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Cyberpiracy falls under 15 U.S.C. § 8131 and states:
(1) In general
(A) Civil liability
Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under title 17, including a work made for hire as defined in section 101 of title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person. The exception under this subparagraph shall apply only to a civil action brought under paragraph (1) and shall in no manner limit the protections afforded under the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) or other provision of Federal or State law.
In short, if you were sued for use of the name he would have to show that there was a specific intent to profit from the domain name. Profit can of course come from any source including a landing page advertisement or from selling the domain name to the Plaintiff or a third party.
To determine whether Defendants acted in bad faith, the Court considers the nine nonexclusive factors outlined in § 1125(d)(1)(b):
(1) the trademark or intellectual property rights of the defendants in the domain name;
(2) the extent to which the domain name is the legal name of a person,
(3) defendant’s prior use of the domain name in connection with a bona fide offering of goods and services,
(4) whether the defendant made a bona fide noncommercial fair use of the domain name,
(5) defendant’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site,
(6) whether the defendant offered 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,
(7) whether the defendant provided false contact information when registering the domain name,
(8) whether the defendant registered multiple domain names which defendant knew were identical to or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, and
(9) the extent to which the trademark incorporated into the domain name is distinctive. Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1219 (9th Cir. 2012)
A clearly non-commercial, active fan site may have rights in the domain name that includes the Plaintiff’s trademark. Make sure that it is clear that it is not an official site. Even a mixture of links to other sites may negate the argument for fair use.