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Prince's Estate Files NJ Lawsuit over prince.com
A dealer in Internet domain names is accused in a cybersquatting suit of an illegal attempt to seize on the posthumous popularity of Prince. The lawsuit was filed in Newark federal court by Comerica Bank and Trust N.A., as personal representative of the estate of Prince and Paisley Park Enterprises, a company that was owned by Prince and is now owned by his estate. Paisley Park Enterprises Inc. v. Domain Capital LLC, 2:2018cv2044.
The defendant, which is based in Englewood, NJ, has the rights to www.prince.com. 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 complaint seeks to have ownership of the domain shifted to the plaintiffs, and to recover statutory damages, or actual damages and profits, under 15 U.S.C. 1117, as well as a permanent injunction against violation of the Lanham Act by Domain Capital.
Peter Pizzi and Christine Gannon of Walsh Pizzi O'Reilly Falanga in Newark and Lora Friedemann of Fredrikson & Byron in Minneapolis are plaintiffs' counsel.
Paisley Park holds three registrations for the Prince trademark: for use in the sale of records, CDs and videotapes of his musical performances; hats, jackets, scarves and shirts featuring the images, name, lyrics or likeness of Prince; and ringtones, among other things.
The defendant has no rights to the Prince trademark, the suit claims. 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. The complaint adds that 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 web address www.prince.com leads to a blank screen and Domain Capital has not used the site in connection with any offering of goods or services, according to the plaintiffs. The plaintiffs say Domain Capital has previously acquired other domain names that it knew were identical or confusingly similar to marks of others, or that were dilutive of famous marks.
On three prior occasions, the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland, has ordered Domain Capital to transfer domain names under the “Uniform Domain Dispute Resolution Policy” because of registration and use of the domain names in bad faith, according to documents from that organization. The cases are referenced in the prince.com complaint, and documents on WIPO's website confirm the case results. In June 2010, for example, WIPO ordered Domain Capital to turn over the rights of www.ultimateguitar.com to Quester Group, a company that held a trademark to the term “Ultimate Guitar.”
Domain Capital's website lists 43 domain names for sale, including SocialSecurityLawyers.com, SportsBars.com and Vino.com. Prince.com is not among them. *****
Charles Toutant writes for the New Jersey Law Journal, an ALM affiliate publication of Entertainment Law & Finance. He can be reached at [email protected].
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