A Uniform Domain Name Dispute Resolution Policy (UDRP) Panel denied Lady Gaga's request for transfer of the domain name ladygaga.org from a third party who had registered the domain name and was using it as a fan site. The UDRP is an alternative dispute resolution process for resolving domain name disputes in a quick and cost-effective manner. In order to win a UDRP complaint and get a domain name transferred, a complainant must show that: (1) the domain name is identical or confusingly similar to a mark it has rights in; (2) that the respondent has no rights or legitimate interests in the domain name; and (3) that the domain name has been registered and is being used in bad faith.
The registrant was using ladygag.org as a fan website featuring tour dates, photographs, video clips, a fan blog, and autobiographical information about Lady Gaga. Lady Gaga alleged in her complaint that the registrant intentionally registered the domain name with knowledge of her fame in order to profit from her fame. Although the panel recognized Lady Gaga's strong rights in the Lady Gaga trademark through her three federal trademark registrations and international fame, and that the ladygaga.org domain name was identical to her Lady Gaga trademark, the panel found that operating a fan website with information on Lady Gaga was a legitimate interest, and therefore decided in favor of the registrant. The panel noted that the website on the domain name was purely non-commercial, did not feature any sponsored links or links to third-party websites which market and sell merchandise bearing the Lady Gaga trademark, and that the only links on the website were to a website owned by Lady Gaga's website designer and another to a website owned by Lady Gaga. However, the Panel also made a point to state that if the registrant were to change the website in a manner that indicated an intent to profit, such as by selling items, offering any commerce, or offering the sale of the disputed domain name, that Lady Gaga could re-file and might be successful.
TIP: A trademark owner is 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 that trademark. Trademark owners should consider defensively registering domain names identical to their trademark and which include their trademark and related terms.