Stefani Germanotta, popularly known as Lady Gaga, filed a UDRP complaint with the National Arbitration Forum against a fan site owner. The complaint, among other things, alleged that the fan registered the domain name in bad faith, and Respondent’s only desire was “to capitalize on and profit from the success and notoriety of Lady Gaga and to keep her from owning and using her name as a web site.”
In reality, our Client is a Lady Gaga supporter who operates a legitimate fan site at the domain name LADYGAGA.ORG. The fan site includes tour dates, photographs, video clips, a fan blog, and autobiographical information about Lady Gaga. The fan site included no third-party sponsored links or commercial content, and our Client does not profit from the fan site.
Complainant also argued that “Respondent was intentionally diverting users away from Lady Gaga” and “that Respondent’s actions were the basis for initial interest confusion.” A three-member panel ruled in favor of our Client, stating that Respondent’s prominent disclaimer on its home page is immediately recognized by Internet users so there is no confusion of association between the fan site and Lady Gaga.
The Panel also held “[t]he Complainant cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration. Respondent’s fan site does meet Complainant’s definition of nominative fair use by its identification of Complainant’s music and related goods and services.”
Interestingly, Complainant failed to present strong evidence of Lady Gaga’s common law rights dating prior to Respondent’s registration of LADYGAGA.ORG. The Panel states that it “is willing to concede to Complainant’s request that it recognize she established common law rights at some time, Complainant’s failure to establish a specific time minimizes the effect of such a finding.”
This holding reiterates that trademark owners are not necessarily entitled to recover a domain name registered by a third party based merely on the fact that the domain name is similar to their trademark. Trademark owners should consider defensively registering domain names identical to their trademark and which include their trademark and related terms.
If you are an artist, entertainer, athlete, or someone in the public eye, and your name is being used in domain names without your permission, please contact us to discuss your options.
The full-text of the NAF decision can be read here.