PAISLEY PARK ENTERPRISES, INC. AND COMERICA BANK & TRUST, N.A. AS PERSONAL REPRESENTATIVE OF THE ESTATE OF PRINCE ROGERS NELSON v. DOMAIN CAPITAL, LLC

Filing 1

COMPLAINT against DOMAIN CAPITAL, LLC ( Filing and Admin fee $ 400 receipt number 0312-8907841) with JURY DEMAND, filed by PAISLEY PARK ENTERPRISES, INC. AND COMERICA BANK & TRUST, N.A. AS PERSONAL REPRESENTATIVE OF THE ESTATE OF PRINCE ROGERS NELSON. (Attachments: #1 Civil Cover Sheet)(GANNON, CHRISTINE)

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Peter J. Pizzi
Christine I. Gannon
WALSH PIZZI O’REILLY FALANGA
LLP One Riverfront Plaza
1037 Raymond Boulevard, Suite 600
Newark, New Jersey 07102
Tel.: [phone]

Of Counsel:
Lora M. Friedemann (to be admitted pro
hac vice)
FREDRIKSON & BYRON, P.A.
200 South Sixth Street, Suite 4000
Minneapolis, MN 55402-1425
Tel.: [phone]

Attorneys for Plaintiffs
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

PAISLEY PARK ENTERPRISES, INC.
AND COMERICA BANK & TRUST,
N.A. AS PERSONAL
REPRESENTATIVE OF THE ESTATE
OF PRINCE ROGERS NELSON,

Civil Action No.
COMPLAINT AND
DEMAND FOR JURY TRIAL

Plaintiffs,
Filed Electronically
v.
DOMAIN CAPITAL, LLC,
Defendant.

Plaintiffs Paisley Park Enterprises, Inc (“Paisley Park”) and Comerica Bank &
Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson (“Personal
Representative”) (collectively, “Plaintiffs”), hereby bring this Complaint against
Defendant Domain Capital, LLC (“Defendant” or “Domain Capital”) for violations of the
Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).

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INTRODUCTION
1.

Prince Rogers Nelson, the international superstar and renowned artist

known as “Prince,” died on April 21, 2016, at Paisley Park in Chanhassen, Minnesota. A
probate matter for the estate of Prince Rogers Nelson (the “Prince Estate”) is pending in
Carver County, Minnesota, Court File No. 10-PR-16-46.
2.

Plaintiff Comerica Bank & Trust, N.A. is the Personal Representative of the

Prince Estate. Plaintiff Paisley Park Enterprises, Inc. is a Minnesota corporation that was
owned by Prince during his lifetime and is now owned by the Prince Estate.
3.

A prodigious and successful songwriter and musician, Prince wrote and

recorded thousands of songs during his lifetime.
PARTIES
4.

Comerica Bank & Trust, N.A., is the court-appointed Personal

Representative of the Prince Estate.
5.

Paisley Park Enterprises, Inc. is a Minnesota corporation with offices at

7801 Audubon Road, Chanhassen, Minnesota 55317.
6.

On information and belief, Domain Capital, LLC is a Delaware corporation

with its principal place of business at 55 North Dean Street, Englewood, New Jersey
07631.
VENUE AND JURISDICTION
7.

This is an action for violations of the Anticybersquatting Consumer

Protection Act, 15 U.S.C. § 1125(d).

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8.

The Court has subject matter jurisdiction under 28 U.S.C. §§ 1121(a), 1331

and 1338(a).
9.

The Court has personal jurisdiction over Defendant because its principal

place of business is in New Jersey.
10.

Venue is proper under 28 U.S.C. § 1391(b) and (c).
FACTS

11.

Prince Rogers Nelson is one of the best-selling artists of all time, having

sold over 100 million records worldwide. Prince was a musical innovator who integrated
a wide variety of styles in his work, including funk, rock, R&B, new wave, soul,
psychedelia, and pop. Prince was inducted into the Rock and Roll Hall of Fame in 2004.
12.

Born Prince Rogers Nelson, Prince rose to fame in the late 1970s and early

13.

Prince and Paisley Park Enterprises have used the trademark PRINCE® in

1980s.

connection with musical sound recordings, audio visual recordings, phonographic
records, audiotapes, compact discs and videotapes embodying musical performances
since 1978, and have invested considerable resources to develop brand equity, public
recognition, and goodwill in the mark.

Plaintiffs also sell merchandise under the

PRINCE® trademark.
14.

Paisley Park Enterprises owns the following United States Trademark

Registrations for the PRINCE® trademark:

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Reg. No.

Goods/Services

Reg. Date
2,151,863
April 21, 1998
5,438,807
April 3, 2018

Phonograph records, audiotapes, compact discs, and videotapes
embodying musical performances.
Clothing, namely, hats, headwear, jackets, jerseys, long-sleeved
shirts, scarves, short-sleeved or long-sleeved t-shirts, t-shirts, tank
tops, featuring the images, words, designs, lyrics, name, or
likeness of the famous musician, recording and performing artist
known as Prince.
Entertainment services, namely, non-downloadable ringtones;
Entertainment services, namely, providing non-downloadable
prerecorded music.

Musical sound recordings; audio visual recordings featuring
November 28, 2017 music.
5,344,001

15.

Since his death in 2016, Prince’s world-wide fame has grown as people

seek to learn more about the life of an artist who was known for protecting details of his
private life while alive.
16.

On information and belief, Domain Capital is a financial services company

offering financing and loans relating to the use, sale of, and trade in domain names.
17.

Domain Capital offers domain names for sale on its website, and offers its

services to “domain name owners who need a ready source of asset-based working
capital” and “[d]omain name owners who wish to acquire premium domain names for
their own use or for trade in the domain name aftermarket.”
18.

On information and belief, Domain Capital engages in the practice of

selling and trafficking in domain names. As of the date of this Complaint, Domain
Capital has forty-three (43) domain names for sale on its website, domaincapital.com.

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19.

On information and belief, Domain Capital has, in the past, acquired

multiple domain names which Defendant knew were identical or confusingly similar to
the trademarks of others, or that were dilutive of famous marks.

On three prior

occasions, Domain Capital has been ordered to transfer domain names under the Uniform
Domain Dispute Resolution Policy for registration and use of the domain names in bad
faith.
20.

On information and belief, Domain Capital enters into lease-back financing

agreements with the owners of “premium” domain names, wherein Domain Capital buys
the domain from the owner and then leases the domain back to the previous owner.
Through the use of a domain lease-back financing agreement, the previous owner of a
domain may continue to operate the website while having its true identity shielded from
the public.
21.

In a letter dated May 9, 2018, counsel for Domain Capital represented to

counsel for Plaintiffs that Domain Capital owns the domain name www.prince.com
pursuant to a lease-back financing agreement with an undisclosed third party.
22.

Defendant’s domain name www.prince.com is identical to Plaintiffs’

registered PRINCE® mark.
23.

As of the date of this Complaint, the site www.prince.com resolves to a

blank page, and is thus not being used for a bona fide commercial use.
24.

On information and belief, Domain Capital has never used the domain

name in www.prince.com connection with a bona fide offering or any goods or services.

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25.

Per its May 9, 2018, letter to Plaintiffs’ counsel, Domain Capital does not

use www.prince.com for bona fide commercial purposes. Rather, Domain Capital has
leased the domain back to its previous owner so that person’s/entity’s identity may be
shielded from the public.
COUNT ONE
Cybersquatting in Violation of 15 U.S.C. § 1125(d)
26.

Plaintiffs incorporate the above allegations.

27.

Defendant owns the website www.prince.com.

28.

Prince Rogers Nelson is the personal name of the famous musician and

songwriter, and the trademark PRINCE® is a famous, registered trademark symbolizing
Prince Rogers Nelson and his music.
29.

Defendant Domain Capital violated Section 43(d) of the Lanham Act by

trafficking in the website www.prince.com with a bad faith intent to profit from Prince
Rogers Nelson’s personal name and/or the trademark PRINCE®, both of which were
distinctive marks and/or famous at the time the Defendant acquired or registered the
domain name.
30.

The domain name www.prince.com is identical to, or confusingly similar

to, or dilutive of, Plaintiffs’ famous personal name and registered and common law
trademark rights.
31.

Defendant has no trademark rights in the PRINCE® trademark.

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32.

Defendant has acquired multiple domain names that Defendant knew were

identical or confusingly similar to marks of others or that were dilutive of famous marks,
including www.aspire.com, www.ultimateguitar.com, and www.manhunt.com.
33.

Defendant’s

arrangement

with

the

lessee/previous

owner

of

www.prince.com has allowed the lessee/previous owner to intentionally shield its
identity.
34.

Defendant acted with bad faith intent to profit.

35.

Defendant should be ordered to transfer the domain name www.prince.com

to Plaintiffs.
36.

Plaintiffs are entitled to damages under 15 U.S.C. § 1117 consisting of

actual damages and profits or, at Plaintiff’s election, an award of statutory damages.
COUNT TWO
Immediate and Permanent Injunctive Relief
37.

Plaintiffs incorporate the above allegations.

38.

The trademark PRINCE® is owned by Plaintiffs.

39.

The trademark PRINCE® was distinctive and famous at the time Defendant

registered or acquired the domain name www.prince.com. The personal names Prince
and Prince Rogers Nelson were also distinctive and famous at the time Defendant
registered or acquired the domain name www.prince.com.
40.

Defendant Domain Capital violated Section 43(d) of the Lanham Act by

trafficking in the website www.prince.com with a bad faith intent to profit from the
domain name.

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41.

If Defendant continues to violate Section 43(d) of the Lanham Act,

Plaintiffs’ interests will be permanently and irreparably damaged further than they
already have been.
42.

Plaintiffs are entitled to an immediate and permanent injunction requiring

Defendant and all those acting in concert with it to cease violating Section 43(d) of the
Lanham Act.
JURY DEMAND
43.

Plaintiffs demand a jury trial on all issues so triable.
REQUEST FOR RELIEF

WHEREFORE, Plaintiffs respectfully request that the Court:
1.

Enter judgment in favor of Plaintiffs on their claims against Defendant;

2.

Order Defendant to transfer the domain name www.prince.com to

Plaintiffs;
3.

Enter a preliminary and permanent injunction preventing Defendant and all

of those acting in concert with them from further violations of the Lanham Act;
4.

Enter judgment in favor of Plaintiffs and against Defendant for all damages

in an amount to be determined at trial, including any applicable interest;
5.

Declare this case exceptional under 15 U.S.C. § 1117 and enter an Order in

favor of Plaintiffs and against Defendant for all of Plaintiffs’ attorneys’ fees, costs and
expenses incurred herein;
6.

Enter an Order for any such other and further relief as allowed by law or

determined to be just and appropriate.

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Dated: July 25, 2018

WALSH PIZZI O’REILLY FALANGA
LLP
s/ Christine I. Gannon
Peter J. Pizzi
Christine I. Gannon
One Riverfront Plaza
1037 Raymond Blvd., Suite 600
Newark, New Jersey 07102
Tel: [phone]
Of Counsel:
Lora M. Friedemann (to be admitted pro hac
vice)
FREDRIKSON & BYRON, P.A.
200 South Sixth Street, Suite 4000
Minneapolis, MN 55402-1425
Tel.: [phone]
Attorneys for Plaintiffs

9

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RULE 11.2 CERTIFICATION
I hereby certify that, to the best of my knowledge, the matter in controversy is not
the subject of any other pending or anticipated litigation in any court or arbitration
proceeding, nor are there any non-parties known to Plaintiffs that should be joined to
this action. In addition, I recognize a continuing obligation during the course of this
litigation to file and to serve on all other parties and with the Court an amended
certification if there is a change in the facts stated in this original certification.
Dated: July 25, 2018

WALSH PIZZI O’REILLY FALANGA
LLP
s/ Christine I. Gannon
Peter J. Pizzi
Christine I. Gannon
One Riverfront Plaza
1037 Raymond Blvd., Suite 600
Newark, New Jersey 07102
Tel: [phone]
Of Counsel:
Lora M. Friedemann (to be admitted pro hac
vice)
FREDRIKSON & BYRON, P.A.
200 South Sixth Street, Suite 4000
Minneapolis, MN 55402-1425
Tel.: [phone]
Attorneys for Plaintiffs

10

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RULE 201.1 CERTIFICATION
Pursuant to Local Civil Rule 201.1, Plaintiffs, through their attorneys certify that
the above-captioned matter is not subject to compulsory arbitration because, inter alia,
Plaintiffs seek injunctive relief.

Dated: July 25, 2018

WALSH PIZZI O’REILLY FALANGA
LLP
s/ Christine I. Gannon
Peter J. Pizzi
Christine I. Gannon
One Riverfront Plaza
1037 Raymond Blvd., Suite 600
Newark, New Jersey 07102
Tel: [phone]
Of Counsel:
Lora M. Friedemann
FREDRIKSON & BYRON, P.A.
200 South Sixth Street, Suite 4000
Minneapolis, MN 55402-1425
Tel.: [phone]
Attorneys for Plaintiffs

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