Anybody here ever file an ICANN proceeding to take a domain name?

[BenBurch]

I'm trying to help a friend take a domain name corresponding to her stage name from a cybersquatter. Does anybody here have experience with this? I'd appreciate any advice.

Thanks!

-Ben

[tkingdoll]

Did she own the domain before?

[BenBurch]

No. The name was taken before she ever thought of a web site. He use of the trademark goes back to 1975, though, and is still in continuous use.

[tkingdoll]

No. The name was taken before she ever thought of a web site. He use of the trademark goes back to 1975, though, and is still in continuous use.

Ah. Well, that's a sticky situation then, because you can't trademark a name as such (for example your real name), as lots of people also have that name. If you're already extremely famous and someone is deliberately capitalising on that, then you have more of a case, but even then you're talking about a hugely expensive legal battle you might not win.

If the domain is her trademarked business name then someone else is perfectly entitled to trade using that name in another sector. So, say your friend has established her stage name as a trademark in the medium of entertainment. There's nothing to stop anyone setting up a jewellery website using that name. Different type of business, so there's no encroachment of territory, so to speak.

No-one has an automatic right to a domain name, but if you have a business trademark which is being infringed by someone in the same sector (for example some Joe Bloggs sets up applecomputers dot com and sells CD ROM drives), then normal trademark rules may apply and you can take them to court if you have the money.

If the owner of the domain is demanding an unreasonable amount of money to sell the domain to your friend, they are cybersquatting. It's only cybersquatting if they are trying to profit from your friend's trademark. If it's just that someone else owns a domain your friend wants, then no dice.

So...what is the domain pointing to at present? If someone has registered it and is doing nothing with it, or using it for a site unrelated to your friend's industry, then there's nothing she can do about it at all.

[Lothian]

I'm trying to help a friend take a domain name corresponding to her stage name from a cybersquatter. Does anybody here have experience with this? I'd appreciate any advice.

Thanks!

-BenI am no expert but can you not just get a variation such as

Julieandrews.com
Julie-andrews.com
Julie_andrews.com
Julie.andrews.actress.com
home.of.julie.andrews.com
julie.andrews.world.com
etc

[BenBurch]

I am no expert but can you not just get a variation such as

Julieandrews.com
Julie-andrews.com
Julie_andrews.com
Julie.andrews.actress.com
home.of.julie.andrews.com
etc

Sure she could, but that isn't where surfers wind up when they just type her name and add .com.

She has .org and has since she started having a web site in 1999.

[BenBurch]

Her domain at present points to a generic destination page with links to commercial things somewhat similar to the work she does. The current owner is "FIG Vietnam," a notorious cybersquatter. I have found a number of cases against them that they have lost on very similar grounds; ICANN proceedings have rules that are not like those of the regular courts.

[tkingdoll]

Her domain at present points to a generic destination page with links to commercial things somewhat similar to the work she does. The current owner is "FIG Vietnam," a notorious cybersquatter. I have found a number of cases against them that they have lost on very similar grounds; ICANN proceedings have rules that are not like those of the regular courts.

OK. Well, it's only cybersquatting if the domain owner is trying to profit from the reputation of the trademark. Has she approached the owners and asked to buy the domain? Is she the only person trading under that name in any sector? How well-known is she? What do you mean by 'somewhat similar'?

We need more information. How is the domain composed? Is it firstnamelastname dot com, or something like firstnamelastnamedancer dot com, or what? Those make a huge difference to whether or not the domain owner is deliberately cashing in.

I guess in a nutshell, I'm asking: what is your evidence that the domain owner has registered it solely to profit from the trademark of your friend? Without knowing how generic the domain is, we don't have enough to go on here.

[BenBurch]

Well, I don't think its giving away anything to tell you; My friend is former porn star and current author and artist Annie Sprinkle and she is the only "Annie Sprinkle" I know of operating under that name, so its quite likely to be unique. As for somewhat similar, they are pointing at porn sites through affiliate links. The domain is anniesprinkle.com. We offered to just buy it several times and never had any sort of reply.

[volatile]

Well, I don't think its giving away anything to tell you; My friend is former porn star and current author and artist Annie Sprinkle and she is the only "Annie Sprinkle" I know of operating under that name, so its quite likely to be unique. As for somewhat similar, they are pointing at porn sites through affiliate links. The domain is anniesprinkle.com. We offered to just buy it several times and never had any sort of reply.

You know Annie Sprinkle? Wow. She's amazing. I'm using some of her work in my PhD thesis, actually.

Might I attest to these who haven't heard of her that she's most definitely in the Julie Andrews league in the right circles.

[Almo]

You know Annie Sprinkle? Wow. She's amazing. I'm using some of her work in my PhD thesis, actually.

Now I'm curious.

[tkingdoll]

Hmmm. Weird that you didn't get any reply from your requests to buy. Normally cybersquatters will ask for a silly sum of money. I'd speculate that means he's getting a lot of traffic and is happy with the revenue that's bringing in. Still, it's weird not to say "ok a million bucks" even speculatively. Unless he's trying very hard to stay the right side of the cybersquatting law.

But if your friend is/was the only pornstar operating under that name, and is/was well-known, then the current domain owner is going to struggle to justify how he coincidentally happened to start a porn link farm under that same name by coincidence.

Well, I'd say your next step is to file a complaint with a dispute resolution provider. To do that, though, you have to establish that he's a cybersquatter. From the InterNIC website:

In order to have the domain name transferred or cancelled, the trademark holder must establish (1) that he has a legally recognized trademark in a name that is identical or confusingly similar to the domain name; (2) that the current registrant of the domain name has no legitimate rights in the name; and (3) that there has been some evidence of bad faith or abuse.

http://www.internic.net/faqs/udrp.html

She'll have to be able to demonstrate that her name is an established trademark, otherwise the ICANN laws don't apply (as I said, you can't demand the rights to your name ordinarily). But I imagine there's precedent from other adult movie stars. On face value your case looks pretty positive, but I ain't no law-talking-woman so take that opinion with a pinch of snuff.

The major fly in the ointment that I can see is that the owner is in Vietnam so you have language barrier issues. No idea what happens in that scenario but the dispute resolution provider you choose should be able to assist with that.

[BenBurch]

I'm thinking the reason is that the request wasn't in Vietnamese...

[BenBurch]

Yes, I just checked with her, its a registered trademark, and even before it was it was a common-law trademark and a registered DBA.

[BenBurch]

You know Annie Sprinkle? Wow. She's amazing. I'm using some of her work in my PhD thesis, actually.

Might I attest to these who haven't heard of her that she's most definitely in the Julie Andrews league in the right circles.

Yeah, I've known her for a decade now. She's just the nicest person you will ever meet and so is her wife.

-Ben

[tkingdoll]

I'm thinking the reason is that the request wasn't in Vietnamese...

Would it be worth putting out a call for a Vietnamese-speaker to help with sending a request? If you had evidence of a request for a silly price, I suspect that would help your case enormously.

[volatile]

Yeah, I've known her for a decade now. She's just the nicest person you will ever meet and so is her wife.

-Ben

So I've heard... she sat in on some friends' of mine's papers at a Stateside conference, and I met one of her production managers when she was touring the UK in the summer, and no-one has anything but nice things to say about her. Plus, her books are brilliant.

[BenBurch]

Would it be worth putting out a call for a Vietnamese-speaker to help with sending a request? If you had evidence of a request for a silly price, I suspect that would help your case enormously.

I work with a Vietnamese person and I believe his Mom speaks and writes it fluently... I'll ask him first.

[tkingdoll]

So I've heard... she sat in on some friends' of mine's papers at a Stateside conference, and I met one of her production managers when she was touring the UK in the summer, and no-one has anything but nice things to say about her. Plus, her books are brilliant.

Yeah?

Say...BenBurch, I have an idea. Incoming PM.

[The Central Scrutinizer]

Yeah, I've known her for a decade now. She's just the nicest person you will ever meet and so is her wife.

-Ben

Her wife? How can that be? She's a wo.......oh, now I get it. :o

[volatile]

Yeah?

Yes indeed. Both Post-Porn Modernist and Hardcore from the Heart are great, in their own ways.