Grandfathered TM Domains

Mark T · May 13, 2016

First, I will not post the name that leads me to this post. It isnt necessary.

Anyways, I am curious of your opinions.

I have a domain name that I regged well over 10 years ago. Just sitting on it.

Two years ago I tried to give it away to a certain party that it applies to. He didnt want it. It wasnt his thing.

Last year, this person is slowly becoming a celebrity, and he gave me the go ahead to make a fan site, as yes, I am a big fan.

So now I have a dilemma.

It now exists on the fringe of TM.

Technically it violates two issues, both that did not exist prior to a couple of years ago. One issue wasnt even a legal issue until the TM laws were changed to cover that aspect.

And that is where it stands now.

The person is slowly becoming a big name, and we no longer talk as I know he exceptionally busy building his career.

I do run a small fan site and have not had any legal challenge as a result. But I can clearly see the day where it may.

Thoughts or opinions?

DU · May 13, 2016

What two issues does it violate?
How did you get permission?

If you have a website with permission on the name I'm not sure the legal issue unless you violate terms of elsewhere (use copyrighted images etc without permission).

You probably need to be less vague.

Do you really want to be that big a fan of anyone? There's much more useful ways to spend time in what is a limited amount provided to each person

Mark T · May 13, 2016

Firstly , I will be a fan regardless. I was a huge fan of his dads years ago.

One issue is the obvious trademark issue. This person last year went pro.

Second, it is his name. When I purchased this name, I do not believe TM covered persons names directly. It has been that many years yes.

As in the op, I stated that attempts were made to outright give him this name. He declined. He also expressed gratitude of my fan intention. This is in FB messenger.

But nothing in direct paper form.

I do not have an adversarial relationship nor will one be fostered.

DU · May 13, 2016

The basic rule of thumb is to find out what the rules are for the fan sites and follow them. If there are any (James Patterson, Game of Thrones, etc will have them but your guy may not).

You don't have any specific documentation allowing for use of the TM. Your site won't receive special protections so if you violate copyright or infringe on the TM in ways that the soon-to-be-famous person doesn't like you could risk losing the site. If you got verbal permission and your site is obviously respectful the risk is smaller; however, if it happens that they get big for their boots and close you down, the person loses a fan-site, right? Then.....

check to see if personname.sucks is available.

Mark T · May 13, 2016

No, I wont ever be regging a "sucks" domain. I respect him. And I am also above that kind of action.

On the fan site I have installed the correct legal disclaimers. Not just for my protection, but instead to make sure nobody gets the wrong idea if and when they visit. I make no claim to trade or service marks, short of the domain.

Again though, he is a decent kid and comes from a decent family. I would not fight any attempt for his self or his handlers to aquire it. Remember, I wanted to give it to him and I still would.

I have held it since he was 8 or something. And there is a respectful non-adversarial reason.

hxp · May 13, 2016

Mark T said:
No, I wont ever be regging a "sucks" domain. I respect him. And I am also above that kind of action.

On the fan site I have installed the correct legal disclaimers. Not just for my protection, but instead to make sure nobody gets the wrong idea if and when they visit. I make no claim to trade or service marks, short of the domain.

Again though, he is a decent kid and comes from a decent family. I would not fight any attempt for his self or his handlers to aquire it. Remember, I wanted to give it to him and I still would.

I have held it since he was 8 or something. And there is a respectful non-adversarial reason.

So, what's the problem...?

You only really have issues when you don't give up the name. If you're willing to give up the name, now and in the future, then do your thing.

Only the TM owner cares about the TM. There's no third party that polices the web in hopes of finding TM infringements.

I would suggest, however, that you refrained from cashing in on his success. Don't host a shop or ads, because IF your relationship goes sour, he could request damages.

I'd also keep the FB messenger conversation on file (Screenshot/print it out), just in case.

DU · May 13, 2016

Mark T said:
No, I wont ever be regging a "sucks" domain. I respect him. And I am also above that kind of action.

On the fan site I have installed the correct legal disclaimers. Not just for my protection, but instead to make sure nobody gets the wrong idea if and when they visit. I make no claim to trade or service marks, short of the domain.

Again though, he is a decent kid and comes from a decent family. I would not fight any attempt for his self or his handlers to aquire it. Remember, I wanted to give it to him and I still would.

I have held it since he was 8 or something. And there is a respectful non-adversarial reason.

To be clear - the .sucks thing was a joke based on the stupidity of that tld!

But I agree with @hxp with "What's the problem?"

Sounds to me like you have no concerns as you are a true fan. If you're a positive fansite it's unlikely you will get an issue as long as you adhere to basic rules: always credit (photographs etc belong to someone), don't steal content and get permission. If one day there is an official fansite you might lose the name or lose an audience. Maybe by then you have other focus? Who knows. You seem to be willing to give it up.

This will never be a major lawsuit or anything. A cease-and-desist will be all that's needed - you've already said so.

Life's too short to worry about what-ifs. What's the absolute worst thing that happens? You spend ages building a site and one day you don't have it anymore. I can think of more important things to worry about.

Good luck to your site and hope everyone continues to be happy with each other.

Mark T · May 13, 2016

True, there really isnt a problem that I can foresee. And yes it wouldnt take a but a simple request. And no, no ads, no store, no solicitation to buy ever offered.

Yes, of course I would really enjoy being an "official" fan club operator. That would please me.

But, alas, I have spelled out the outlay. And having been always reading about domain TM issues, and now I am two years live...

Having just joined here, I thought an excellent topic for myself and others, concerning the challenges and pitfalls of properly handling TM issue'd domains, specifically ones that were long ago registered with no TM issues at date of purchase, yet fast forward to now where suddenly I have to be sure to be proper.

I bet many of you here are better versed with TM concerns than I, so I ask of you all.

Thanks for the feedback, sincerely.

Grandfathered TM Domains

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