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 recording artist’s estate filed suit in a Newark federal court Wednesday against Domain Capital of Englewood, New Jersey, which owns 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 suit 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 a permanent injunction against violation of the Lanham Act by Domain Capital.
The suit was filed by Comerica Bank and Trust, N.A., as personal representative of the estate of the artist, whose full name was Prince Rogers Nelson, and Paisley Park Enterprises, a company that was owned by Prince and is now owned by his estate.
Greg Freeman, the chief operating officer for Domain Capital, said the company would not comment on the suit.
Peter Pizzi and Christine Gannon of Walsh Pizzi O’Reilly Falanga in Newark and Lora Friedemann of Fredrikson & Byron in Minneapolis filed the suit for the estate and Paisley Park. They did not return calls about the case.
Paisley Park holds three registrations for the Prince trademark—for use in the sale of records, CDs and videotapes of 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. 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.
The web address www.prince.com leads to a blank screen, and Domain Capital has not used it 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 Association, based in Geneva, 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 complaint, and documents on the WIPO website confirm the case results. In June 2007, WIPO ordered Domain Capital to turn over the rights of www.aspire.com to CompuCredit Corp., an Atlanta credit card company that held a trademark on the term “Aspire.” In July 2007, that body ordered Domain Capital to turn over the rights to www.manhunt.com to Online Buddies Inc., which held a trademark on the term. And in June 2010, 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.