According to a news report in the New Jersey Law Journal (found via Law.com), the estate of the late musician known as Prince filed a lawsuit to try and get the Prince.com domain name. According to the article, “The suit claims that the company’s ownership of the domain violates §43(d) of the Lanham Act because it represents a bad-faith intent to profit from association with the artist, who died at age 57 in 2016.”
The lawsuit is targeting Domain Capital (an advertiser on DomainInvesting.com), a company that offers various financing options for domain owners. Here’s what seems to have been the impetus for the estate of Prince to file the lawsuit, according to the Law.com article:
“According to the complaint, Domain Capital represented to the estate in a May 9, 2018, letter that it owns www.prince.com pursuant to a lease-back financing agreement with an unnamed third party. Domain Capital said in the letter that it leases the domain back to its previous owner so that party’s identity may be shielded from the public, the complaint states.”
I visited Prince.com this morning, and the domain name did not resolve. The Law.com article states that “Domain Capital has not used it in connection with any offering of goods or services, according to the plaintiffs.”
In August of 2010, DNJournal reported that the Prince.com domain name was sold for $235,000 via Media Options. That sale ended up being the 35th largest publicly reported domain name sale of 2010. From my vantage point, Prince.com is so valuable because of the generic nature of it, as evidenced by the thousands of trademarks in the USPTO containing the word “prince” and the likely tens of thousands of companies and brands with “Prince” in their name.
I am more familiar with the UDRP process than a Lanham Act lawsuit, but Prince.com seems like a generic domain name to me. I am familiar with two large companies called Prince, including Prince (the tennis and sports company) and Prince (the pasta company). According to Wikipedia, there are also quite a few other companies called Prince as well as people with that last name and/or nickname. Obviously, “prince” is also a meaningful word – for instance Prince William and Prince Harry are two famous princes.
The Prince.com domain name has been the subject of prior legal disputes. In what I believe could be called a landmark case, Prince Sports Group, Inc. tried to wrest control of Prince.com from a British company called Prince plc but was unsuccessful. Here’s what was written about the dispute in a University of Pennsylvania law repository entitled From International Treaties to Internet Norms: The Evolution of International Trademark Disputes in the Internet Age:
“In an emblematic case concerning conflicting, yet valid, rights to a trademark used in a domain name, a U.K. court ruled that the first party to register and use the trademark in the domain name was legally entitled to use the mark as long as there was no likelihood of consumer confusion.26 In that case, a U.S. manufacturer of sports equipment, the Prince Sports Group, Inc., attempted to enjoin Prince plc, a British information technology (“IT’) company, from using the prince.com domain name. The U.S. sporting goods manufacturer had valid trademark registrations for “prince” in both the United States and the United Kingdom, and the British IT company also had valid common-law rights in the United Kingdom to use the same “prince” mark. Prior to the Internet, the two companies, with their two distinct products and services, coexisted peacefully. However, when the U.S. sporting goods company sought to register prince.com as a domain name, it was surprised to learn that the U.K. IT company had already registered the domain names prince.com and prince.co.uk. The US. company sent a cease and-desist letter threatening further legal action if the U.K. company did not transfer the domain name to the U.S. company. In response, the UK. company brought an action for declaratory relief in London’s High Court and deposited the domain names with the U.K. Court pending final decision. Relying on the theory of “first-in-time,” the U.K. Court ruled in favor of the U.K. company. The court reasoned, first, that since domain names are registered on a first-come, first serve basis, the U.K. company was the first organization to officially establish its valid trademark as a domain name. Second, and more importantly, the court reasoned that because the businesses of the two parties clearly were distinct, there was no likelihood of confusion.”
In addition to this litigation, someone with the last name Prince filed a UDRP against Prince.com in 2010 alleging that the domain name had been stolen. The domain registrant won the proceeding.
I am not an attorney, but I don’t think the domain name is being used in a manner that would infringe on the TM rights of the musician’s estate or any other company for that matter. I believe the domain name has value because of its descriptive / generic nature, and if anything, I think the estate should appreciate that it was given the opportunity to buy the domain name.
What would really be interesting is if other “Prince” companies or people were also emailed about the opportunity to buy Prince.com and one of them files a Lanham Act lawsuit just like the musician’s estate did. If that were to happen, how would a court decide which “Prince” has more rights to the domain name?
I will keep you updated if I hear anything else about the lawsuit.