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Lady Gaga Loses Domain Claim for (with a Doh!)

September 23, 2011

This morning my inbox coughed up the most recent spate of UDRP decisions from the National Arbitration Forum (NAF) – the body that decides a big chunk of the domain name arbitrations in … er, the world.   Breezing through usual types of decisions (e.g., folks registering a variation of known commercial trademarks to create ad-squatting sites) I got a taste of some celebrity fun.

Lady Gaga (née Ms. Stefani Germanotta) – or more precisely, her attorney – brought a UDRP arbitration to obtain the domain from its owner, a huge Lady Gaga fan.  The site itself is a noncommercial fan site containing prominent disclaimers (keywords:  “noncommercial,” “fan site,”  “disclaimers”).   Claim denied.  Here’s the decision.

So then the game is guess-which-element-Gaga-couldn’t-hit.   Which I did, and was (kinda) wrong.   Our elements are as follows:

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

The first element is a slam dunk.  And there’s enough to establish that nobody … nobody (even stuffy arbitrators, apparently) is denying that Gaga is, like, super famous; as is the Lady Gaga mark.  I thought the claim would fall on (3), the bad faith element, but the panel doesn’t get there; it kills the claim at (2), finding the Respondent has a legitimate interest in the domain.

The Panel agrees and finds that Respondent’s use of the disputed domain name in conjunction with a fan website is a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). * * *

The Complainant’s arguments that the Respondent registered the name to take advantage of Complainant’s fame are unsupported by the evidence presented. The 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. If the Respondent were to change her use in the future in a manner that indicated an intent to profit, such as by selling items, offering any commerce, or offering or accepting the sale of the disputed domain name such facts might justify a refilling and, depending on the circumstances, could lead a Panel to a different outcome than the one reached by this Panel in the present matter.

So Respondent gets a clear directive here: Do Not Monetize!   Easy enough it seems, given the site as it stands.

Then my minor questions are:  How much did Lady Gaga have to do with this?  (My guess, not a lot.)  And why bring this arbitration now?  The Respondent argues that there are lots of other Gaga fan sites, and that they have been operating for three years without objection.  You see these arguments a lot, and while they are not generally legally dispositive, the arbitrators are after all organic lifeforms prone to influence by the obvious.

In my world, a substantial delay in prosecution usually means the site said something the Complainant didn’t like, so Complainant tries to curb perfectly legal speech and opinion through the trademark (and often copyright) laws.   Man, I see tons of that, as reprehensible as it may be.  I am not saying that is the case here, and I don’t really care.

Notwithstanding, there is the obvious public-relations snafu this might be.  Gaga tries to shut down fan site after three years?  Sounds like a potential Streisand Effect problem, as well.  We’ll see how this plays out in the next few days…

But the big fat pressing question from me is:  Why didn’t you register the freaking .org when you were buying domains in the first place?  I see this all the time.  The clients call wanting to sue over TLDs they should have registered, and their answer to that question is, “Well, we didn’t need them,”  and “Why should we pay for them?”  Dude, seriously, it’s like $15 a year.   It’ll cost a bunch more that that to try to get it from someone else, and as in this case, you may not.

In the end, we have just another standard fan-site case, only with a uber-famous player.  Can’t wait to see how the LCD news gets it legally wrong on reporting this one …

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