It seems that someone has registered www.marianorivera.com. SFX Sports, Mariano Rivera’s talent agency and marketing company sent this cease & desist letter to the registrant of marianorivera.com.
As legal counsel for SFX Baseball Group (“SFX Baseball”), I am writing to you on behalf of SFX Baseball’s client, Mariano Rivera (“Athlete”). It has come to our attention that you have registered the website: marianorivera.com. Please be advised that neither SFX Baseball nor Mr. Rivera has granted permission for the usage of Mr. Rivera’s name, likeness, or any attribute connected with him (the “Athlete Likeness”). This unauthorized usage violates Mr. Rivera’s legal rights to control his name, image, and likeness, and constitutes a misappropriation of his right of publicity.
Your actions violate the Anticybersquatting Consumer Protection Act (“ACPA”) (15 U.S.C. § 1125 (d)), a federal statute which provides a cause of action to eliminate the practice of those who, with a bad faith intent to profit, register the marks of others or marks confusingly similar to the marks of others as domain names. The domain name marianorivera.com represents a clear and obvious usage of marks owned by Mr. Rivera. Given that (1) you have no trademark rights in the Athlete Likeness; (2) Mariano Rivera is not your legal or identifying name; (3) you have not used the domain name in connection with bona fide offering of any goods or services; (4) your intent in registering the domain name was to divert consumers from any website operating under Athlete’s authorization; and (5) Athlete’s name is of a famous nature, it is evident that the domain name was registered with an intent to profit. Therefore, your registration and use of the domain name establishes a clear violation of the ACPA and other federal, state, and local laws, including but not limited to the Lanham Act (15 U.S.C. § 1114) and the Federal Trademark Dilution Act (15 U.S.C. § 1125(c), 1127).
[remainder omitted]
SFX very well may have a point. However, given that this is a “fan site,” it looks like 15 U.S.C. s 1125(d) might not apply. The registrant of marianorivera.com is pretty slick. He has avoided any direct ads on his site. Nevertheless, he seems to have registered with blogshares.com, (link here) which might be enough to demonstrate a specific intent to profit.
Instead of fussing around with 15 U.S.C. § 1125(d), SFX should just shoot for relief under 15 U.S.C. § 1129. Section 1129 has a lower standard of proof – requiring only that the Plaintiff demonstrate that the Defendant had a “specific intent to profit.” On the other hand, 15 U.S.C. § 1125(d)(1)(A)(i), requires that the Plaintiff show that the Defendant had a “bad faith intent to profit.” As any domain lawyer can tell you, this “bad faith intent” isn’t all that difficult to prove, but the bar for 15 U.S.C. § 1129 is infinitely lower.
