Fame and business go hand in hand. A business must establish a reputation not only to gain a competitive advantage but also to be viable in the long term. This fame however, must be balanced with exclusivity of the trade name.
The same holds true for celebrity names and the trademarks inherent in those names. Each celebrity wants to be a “household” name and yet be a “marketable” entity, capable of being recognized and exclusively associated with the name.
In terms of marketability of a celebrity name, there is a fine line between protection and exploitation of the name in all media. On the internet, where the need for protection is even greater, one aspect of celebrity remains a grey area – the use of a celebrity name by fans, be it for fan clubs or for disseminating information.
Previously, fan sites have not been allowed to use a celebrity’s name alone as their domain name. A recent case decided under the Internet Corporation for Assigned Names and Numbers’ uniform domain-name dispute-resolution policy (UDRP), however, seems to be a turning point. Stefani Germanotta (Lady Gaga) had filed a complaint under the policy to recover the domain www.ladygaga.org from a fan who was found to have been using this domain name for her own website.
The site in question was a celebrity fan site with a statement on the front page stating that it was an “unofficial” fan site for all information pertaining to Lady Gaga and her shows and music. In countless similar disputes over trademark or celebrity names, the domain name has been transferred to the owner of the name or trademark.
In a departure from its usual strictness, the panel made a distinction in the case of fan sites on the internet. The panel held that Lady Gaga could not establish a legitimate interest in the fan site to acquire its ownership. This decision is a telling sign of the evolution of the jurisprudence on the subject.
The UDRP requires a complainant seeking to acquire a domain name to establish that: (1) the disputed domain name is identical or confusingly similar to their name or trademark; (2) the complainant has legitimate rights or interest; and (3) the domain name has been registered in bad faith.
Here, the panel took the stand that a fan site would fall under “legitimate” “good faith” use and would be protected. In addition, there were no sponsored links and no revenue mechanism (such as pay per click) that the domain owner could exploit.
“The Complainant cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration,” the panel said. “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.”
This development is a welcome departure from earlier rulings which held that a domain name’s failure to distinguish itself from the trademark owner was causing confusion among the general public as to whether the site being accessed was official or unofficial.
The UDRP was developed in response to the peculiar nature of the internet, where only one person could own a particular domain name despite multiple users of a name coexisting in the real world. In this situation, it was essential to devise a mechanism to identify legitimate users of names and trademarks and discourage unauthorized and unfair misuse.
Previous UDRP cases have allowed fan sites to continue using a domain name that marginally distinguishes itself from the celebrity name using such concoctions as “celebritynamefans.com” or “celebritynameupdate.com”, as long as the site has a disclaimer making clear that it is not associated with the celebrity officially, and it does not create a revenue stream for the domain name owner.
However, in almost all cases of fan sites that use just the celebrity name, the panellists have held in favour of celebrities, and even trademark owners, regardless of the manner of use. This, while justified for unauthorized and misleading websites, is a shortsighted and far too play-it-safe approach when it comes to bona fide fans with legitimate interest and fair use.
It is also a unique feature of celebrity names that while a celebrity can claim renown due to their name, only a few names, Lady Gaga for instance, can claim exclusivity. Due to this, it would be desirable that celebrity fans be allowed greater ability to acquire domain names in celebrity names with the purpose of ensuring that domain names are available to the public, not just because of a legal right but also for a legitimate interest.
Tushar Alphonse John is an associate at Lall Lahiri & Salhotra, which is an IP boutique based in Gurgaon.
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