I’m glad to bring our readers, this excellent guest, on celebrity domain names, by Amba Kak, a fourth year law student at the National University of Juridical Sciences (NUJS). In this post, Amba discusses an international domain name dispute with significant repercussions for celebrity fan websites.
The Lady Gaga Decision: Fan sites, legitimate interests and bad faith
By Amba Kak
A few months ago, the National Arbitration Forum, international adjudicatory body for domain name disputes, decided that a celebrity fan site using a disputed domain name would be protected if non commercial and in good faith, as per Uniform Domain Name Disputes Resolution Policy (UDRP). The Complainant, Ms. Steffani Germaniatto, was objecting to the use of the domain name http://www.ladygaga.org, alleging trademark infringement of her common law rights in the mark “LADY GAGA”, the name she is famously known by.
In such cases, as per ¶4(c)(iii) of the Policy, the Respondent can retain the domain name if s/he can demonstrate rights or legitimate interests in the domain name. This is done by proving non commercial or fair use of the domain name without intent for commercial gain by misleadingly diverting consumers. Additionally, it must be demonstrated that the domain name has not been registered and used in bad faith.
The fan site in this case consists of fan videos, letters and pictures of Lady Gaga. It has no sponsored links, or links to third party websites selling Lady Gaga merchandise. It also carries the explicit clarification that it is an ‘unofficial’ Lady Gaga fan site on the home page and even a link to the official website. Based on such findings, the three member panel concluded that the use of the disputed domain name as a fan site qualified as bona fide, legitimate non commercial use as per the Policy.The Panel seemed to take a sympathetic and utilitarian view towards such adoring fans, making the interesting observation that “The Complainant cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.” The Panel made an important distinction between a domain holder with a “legitimate interest” and one with a legal right. In the case of a domain name holding legitimized by ¶4(c)(iii), it is merely the former that is granted and not legal rights akin to a trademark holder.
This case is significant as it marks a departure from earlier, less lenient UDRP jurisprudence relating to celebrity fan sites. When a similar dispute arose in the Tom Welling domain name case, despite being a bona fide fan site, the Panel took the view that unless the domain name contained some indication that the user was entering a fan site (for eg. http://www.tomwellingfanclub.com) there would be “initial interest” confusion of some official connection with the celebrity which would run foul of the policy. It also propagated the view that a fan site which includes pay-per-click (PPC) links or automated advertising would not be regarded as a legitimate non commercial site.
Celebrity Domain Name Disputes in India
Closer to home, there is yet to be a judicial dispute on Indian celebrity fan-site domain names. Prashant earlier highlighted the general laxity among Indian celebrities for protecting their IP rights on the internet, especially in the context of rampant cyber-squatting here. The situation may have improved slightly. In 2009, the famous Indian journalist Barkha Dutt chose to file her complaint at the WIPO Arbitration and Mediation Center against the website
which had nothing to do with her. The Respondent tried to establish bona fide intention, arguing that the choice of domain name was an innocent coincidence as it referred to the hindi translation of her name, meaning ‘adaptation of rain’, and he intended to use it for promotion of rain water harvesting. The Panel found that the present use of the website, predictably, did not reflect these noble intentions and displayed various PPC links. In consonance with the decision in the Tom Welling case, the Panel ruled that the Respondent’s use of such domain name was commercial gain by creating a false association with the Complainant’s name as to the source, sponsorship or endorsement of his website. This fell squarely under ¶4(b)(iv) of the Policy as bad faith registration. Significantly, the decision recognized that although Barkha Dutt did not enjoy trademark rights on her name, similar protection could be granted to her as a common law right. In reaching such conclusion, the WIPO Panel referred to the Delhi High Court decision in ICC Development International Ltd. v. Arvee Enterprises where it was held that using a celebrity’s popularity without his/her authorization is not legitimate use. Further, it was held that a celebrity would have a valid cause of action against opportunistic commercial exploitation or the unauthorized use of his or her name. In fact, way back in 2001, famous Punjabi pop star, Daler Mehndi had also challenged the registration of the domain name www.dalermehndi.net before the Delhi High Court. The Court restrained the defendant from using the domain name, recognizing that the performer’s name had garnered significance in the nature of a trademark.
The most recent celebrity domain name dispute was over http://www.arunjaitley.com
(see an earlier post here), where the defendants were found to have mala fide intention in refusing to transfer the domain name, and asking him to purchase it at exorbitant rates. The Delhi High Court referred to the validity and binding nature of UDRP decisions in domain name disputes such as these. In fact, the Indian Government’s recently implemented ‘.INDomain Name Dispute Resolution Policy’ is based on the UDRP and has identical provisions for ‘legitimate interest’ and ‘bad faith’.
The Arun Jaitley case represented a typical case of cyber-squatting where the inference of ‘bad faith’ is obvious, given the blatant commercial motive of the defendants and the fact that the content of the websites is divorced from any connection to its name. However, as the ‘Lady Gaga’ case demonstrates, the understanding of intention in the case of bona fide celebrity fan sites is not as black and white. If such a dispute were to come up before Indian Courts, a similarly nuanced and case by case approach would be desirable. While ruling on the question of bad faith in such disputes, Indian Courts would have to decide whether to follow the stricter view as in the Tom Welling case or the view more sympathetic to celebrity fans, as in Lady Gaga’s.