An Englewood, New Jersey domain broker, Domain Capital, is being hit by a lawsuit from the estate of the late recording artist, Prince. The suit alleges that the company is infringing on its trademark by owning the website name. Prince died two years ago of a fentanyl overdose. He was 57. His estate owns three trademarks under the artist’s name.
Domain Capital offers a lease-back program in which an owner of a domain sells the digital space to the company and its, in turn, leases it back to the original owner for continued use. This helps the original owner have additional privacy protection. The company, which is an advertiser on DomainInvesting.com, offers financing options for domain owners.
The lawsuit did not indicate how the defendant had profited from this transaction, and the plaintiffs have argued the firm has not used it in connection with any offering of goods or services. When the url is typed into a browser, it currently does not return a legitimate site.
The case is being brought under the Anticybersquatting Consumer Protection Act passed in 1999, which created a federal cause of action if a domain name was registered, trafficked, or used in a way that infringed upon a trademark or personal name. The law was put into place in order to stop cybersquatters from registering Internet domain names containing trademarks without any intention of creating a legitimate website, but rather, who plan to sell the name to the trademark owner or a third party. This practice limits a potential site owner from simply purchasing an unused url outright and, essentially, holds names for ransom.
According to the complaint, Domain Capital “has been ordered to transfer domain names under the Uniform Domain Dispute Resolution Policy for the registration and use of the domain names in bad faith.” Plaintiffs have requested immediate and permanent injunctive relief, transfer of the domain, damages, and attorneys’ fees.
The Prince.com domain has been the subject of other past disputes. In one such instance, Prince Sports Group, Inc. tried to gain control of Prince.com from a British company called Prince plc but was unsuccessful. The 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. Then, an individual with the last name Prince filed another action against Prince.com in 2010 alleging that the domain had been stolen. The registrant won. At the end of the day, the name Prince is a relatively common one, and the domain name is fairly generic.
In 2016, Prince’s estate filed a lawsuit against Jay-Z’s Roc Nation, which owns the online music streaming service Tidal, for copyright infringement. A settlement was reached earlier in 2018. In May of this year, the estate also sued an Oklahoma man for copyright infringement after he posted some of the artist’s videos. Comerica Bank & Trust and its attorneys, Fredrikson & Byron, have been paid $5.9 million in fees and expenses. Prince’s estate is currently estimated to be worth $200 million.