Despite all of “The Fame,” even Lady Gaga doesn’t win them all. Recently, Gaga was on the losing end of a domain name dispute regarding the domain “ladygaga.org.” Gaga had brought a domain name complaint under the Internet Corporation for Assigned Names and Numbers’ (“ICANN”) Uniform Domain Name Dispute Resolution Policy (“UDRP”) against a fan operating the domain ladygaga.org. Gaga alleged that the domain had been registered and was being used in bad faith, that the fan had no rights or legitimate interests in the domain, and the domain infringed Gaga’s mark LADY GAGA.
The fan countered that she was operating an unofficial, non-commercial fan site about Gaga. The fan explained that the site did not contain any sponsored or otherwise commercial links, and as such, the fan was making a legitimate, non-commercial fair use of the domain name.
Under the UDRP, a Complainant must prove all three of the following elements in order to successfully cause the transfer or cancellation of a disputed domain name:
“(i) [the registrant’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) [the registrant has] no rights or legitimate interests in respect of the domain name; and
(iii) [the registrant’s] domain name has been registered and is being used in bad faith.”
UDRP ¶4(a). The arbitration panel found that while Gaga established the first element, she was unable to establish the second (since she failed to establish the second element, the panel found no reason to analyze the third). Accordingly, the panel denied Gaga’s request that the domain ladygaga.org be transferred to Gaga.
The panel found that Gaga established the first “identical or confusingly similar” element. She held three U.S. federal registrations for the mark LADY GAGA for various goods and services, in addition to common law rights, establishing Gaga’s rights in the LADY GAGA mark. For trademark purposes, the panel found the LADY GAGA mark to be identical to the ladygaga.org domain name.
However, with regard to the second “rights or legitimate interests” element, the panel found that the fan’s use of ladygaga.org in conjunction with a nonprofit fan website was a bona fide offering of services, and thus established legitimate rights in the mark. The fan’s use of a prominent disclaimer that the site was not affiliated with Gaga, combined with a page heading indicating that the site was an unofficial fan site, further supported the finding that the fan had “rights or legitimate interests” in ladygaga.org. The panel had some pointed words in responding to Gaga’s complaint that the fan had set up the ladygaga.org fan site to take advantage of Gaga’s fame: “The Complainant [Gaga] cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.”
Even the best “Poker Face” in the world won’t save you when the UDRP elements are stacked against you.