The flamboyant singer known as Lady Gaga is becoming well known for her litigious tendencies. When a London cafe launched a brand of ice cream made out of human breast milk and named it "Baby Gaga" earlier this year, her lawyers apparently fired off a letter claiming that it was "nauseainducing" and requesting that the name be changed. Despite being initially seized for tests by Westminster Council, the ice cream is seemingly now being marketed as "Baby Googoo". Earlier this month Ms Gaga's legal team successfully obtained an injunction preventing a computer gaming company from releasing a single by a cartoon character known as "Lady Goo Goo". Yet legal victory is not always forthcoming for Gaga, who recently lost her bid to gain control of the domain name <ladygaga.org> (the Domain Name) on the basis that it was pointing towards a non commercial fan website.
The case was brought under the Uniform Domain Name Dispute Resolution Policy (UDRP) and filed with the National Arbitration Forum (NAF), based in Minneapolis, USA. The Complainant was listed as Ms Stefani Germanotta, namely because Lady Gaga was born this way (that's enough now, this sort of thing has been done to death, Ed), whilst the Respondent was listed as oranges are cool XD.
To be successful in a UDRP procedure, a complainant must evidence that:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
Gaga was not bluffin' with her muffin (no more now, Ed) and had no problem in proving the first requirement, as her ever vigilant legal team had registered three federal trade marks with the United States Patent and Trademark Office in various classes in the term LADY GAGA.
However, the three-member Panel found that Gaga had not established that the Respondent had no rights or legitimate interests under the second requirement. Given that the three requirements are cumulative, the Complaint therefore failed, and it was not necessary for the Panel to go on and consider the last requirement in relation to bad faith.
The Respondent asserted that she was operating a genuine non commercial "fan" website at the domain name <ladygaga.org> which contained no commercial links and also contained a prominent disclaimer, as follows:
"Ladygaga.Org is just a unprofitable unofficial fansite, we do not get money from it. We are not affiliated in any way with Lady Gaga herself, her record label, or her management. I am not Lady gaga and I don not know her unfortunately. This is a fansite only, created by and for fans of lady gaga. All the material posted here is owned by the respective owners. We do not claim any kind of copyright on them, Thanks"
Given the surrounding facts, the Panel found that the Respondent was using the Domain Name for a bona fide offering of goods or services (in accordance with paragraph 4(c)(i) of the UDRP) and was also making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue (paragraph 4(c)(iii) of the UDRP).
On the face of it in view of the website content the outcome of the case was unsurprising, as previous panels under the UDRP have also denied cases when faced with genuine "fan" sites where there is no commercial activity. This line of case law goes right back to the "Pat Benatar" case in 2004 when a panel refused to transfer <patbenatar.com> on this basis (although Ms Benatar may have better luck today with a refiling, as the domain name now appears to be pointing to a registrar holding page with sponsored links).
However, it is interesting to note that the Respondent also owns around 700 other "celebrity" domain names such as <amywinehouse.org>, <benstiller.org>, <zac-efron.net>, <sarahjessicaparker.org> and <terri-hatcher.net>. The Respondent's business model can be seen at www.fanfusion.org where internet users are able to "adopt" (in other words licence) domain names for use for their fan sites, and thus explains why certain domain names owned by the Respondent are not pointing anywhere, others are pointing towards genuine fan sites and others appear to be pointing to fan sites which are much less well developed. This raises an interesting question in that, although the licensee of the domain name in question may technically not be falling foul of the UDRP by using the domain name to point towards genuine non commercial content, the actual owner of the domain name is quite likely to be making a commercial gain by renting the domain name out to a third party.
What's more it is difficult to see why Gaga only chose to list <ladygaga.org> in the Complaint when the Respondent also owns (or has previously owned) around 20 other "gaga" based domain names such as <dreamgaga.org>, <gagaforums.com>, <gagaonline.net>, <lady-gaga.net>, <lady-gaga.org> and <ladygagaweb.com>. Any domain names still in the ownership of the Respondent at the time of filing could also have been included in the same Complaint, and this would undoubtedly have made the Respondent's defence more difficult. Given the Respondent's business model, it is quite likely that certain of these domain names are being licensed to third parties, but it would not have been possible for the Respondent to deny responsibility for the content of any corresponding websites on this basis, as the UDRP applies to the registrant who is publically listed on the WHOIS, regardless of any behind the scenes arrangements.
This illustrates how important it is to carefully research all aspects of a case before filing a UDRP. When it comes to domain names supposedly pointing to non commercial fan websites, it is advisable to carefully examine the content of such websites. In this regard we have noticed a recent increase in "celebrity" domain names which appear to be pointing towards genuine fan sites, but upon closer examination such websites have been merely assembled to look like they might be genuine to the casual observer. For example, content may be taken from automatic "feeds" from other websites, standard website design templates may be used, and there could be broken links and no comments left in relation to any posts.
It is understandable that a die hard fan, obsessed with the fame (don't think I didn't spot that, Ed) of their idol may spend hours creating a fan site, and it would in some circumstances be manifestly unfair to order transfer of the corresponding domain name. However, it is less apparent that a registrant holding perhaps hundreds of celebrity domain names would lovingly cultivate hundreds of corresponding fan sites in the absence of any commercial gain. It is therefore very likely that a registrant who registers hundreds of celebrity domain names and points certain of them towards what can only be described as “sham” fan sites is entirely familiar with the terms of the UDRP and knows that such measures will go a long way towards preventing successful claims. The end result of such conduct is that many celebrities will tend to quietly settle instead, leaving aggressive legal measures to one side in favour of using their telephone, thus ultimately making the registrant dirty rich (that’s it now, I’m going to cut you off in a minute, Ed).
Evidently it is difficult for panels to decide just how “genuine” a particular fan site is, but it is submitted that the absence of commercial links is only one aspect – the registrant’s overall conduct should also be borne in mind, including just how many celebrities they purport to be a fan of and how and when the website in question is updated. This case also highlights an important procedural difference between the UDRP Supplemental Rules of NAF and those of the World Intellectual Property Organisation (WIPO), which also handles a large number of UDRP cases. Under the WIPO Rules there is no official procedure for a complainant to file a reply upon receipt of the response, and any submission will be a supplemental filing that a panel may or may not chose to look at. However, the NAF Rules provide that a reply may be filed within 5 days of any response upon submission of a fee of $400. As it happens, Gaga’s reply was filed out of time due to "an unintended intervening circumstance over which Complainant had no control" (no doubt she was caught in a bad romance - I'm getting into this myself now, Ed), but the Panel chose to consider it anyway. Many commentators would argue that such procedural differences are not really within the spirit of the UDRP, where ‘U’ is supposed to stand for Uniform.
To read the decision please take a ride on this disco stick: http://domains.adrforum.com/domains/decisions/1403808.htm (you're fired, Ed).