Ms. Stefani Germanotta v. oranges arecool XD
Claim Number: FA1108001403808
Complainant is Ms. Stefani Germanotta (“Complainant”), represented by Brad D. Rose of Pryor Cashman, LLP, New York, USA. Respondent is oranges arecool XD (“Respondent”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ladygaga.org>, registered with GoDaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
David H. Bernstein, G. Gervaise Davis, and Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 18, 2011.
On August 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ladygaga.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ladygaga.org. Also on August 22, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 2, 2011.
An Additional Submission dated September 12, 2011 was received from the Complainant; however, it was not compliant with Supplemental Rule 7 due to its untimely filing. Respondent filed an Objection to Complainant’s Additional Submission on September 13, 2011. The Panel considered the basis for the tardy filing to be an unintended intervening circumstance over which Complainant had no control and thus determined that Complainant’s Additional Submission would be weighed in the final decision making process.
On September 9, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David H. Bernstein, G. Gervaise Davis, and Darryl C. Wilson, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that she is an internationally renowned recording artist and performer, as well as a fashion icon, and that the Respondent registered the disputed domain name, <ladygaga.org>, with actual knowledge of Complainant’s career. As such Complainant contends that Respondent intentionally registered the domain name to capitalize on Lady Gaga’s fame. Complainant contends that that Respondent has no rights or legitimate interests in the domain name “because it infringes Lady Gaga’s rights to her trademark.”
Complainant further asserts that the disputed domain name is identical in sight, sound and meaning to Lady Gaga’s trademark and that the circumstances surrounding the registration of the disputed domain name “amply establish registration in bad faith….” Complainant claims that Respondent is competing with Complainant and disrupting Lady Gaga’s ability to promote herself and her endeavors and that an attempt to resolve the dispute amicably was not possible because Respondent’s only interests is a desire “to capitalize on and profit from the success and notoriety of Lady Gaga and to keep her from owning and using her name as a web site.”
B. Respondent
Respondent contends that the disputed domain name resolves to a non-commercial, unofficial fan site for Lady Gaga. Respondent further contends that the web site “does not have any sponsored links or links to third-party websites which market and sell merchandise bearing Complainant’s trademark.” Respondent asserts that she is “making a legitimate, non-commercial fair use of the subject domain name, without any intent for commercial gain to misleadingly divert consumers or to tarnish any rights Complainant may assert under Policy ¶ 4(c)(iii).”
Respondent also contended that Complainant failed to establish common law rights in the mark as of the domain name registration date. Respondent notes that Complainant owns several websites and thus Respondent was not disrupting Lady Gaga’s ability to promote herself and her endeavors. Respondent asserts that the disputed domain name and website feature two links with one being related to her website designer and the other being to one of Complainant’s websites, <ladygaga.us>.
C. Additional Submissions
Complainant’s Additional Submission contends that “Complainant established her common law rights in and to her name prior to Respondent’s illegal registration of it as a domain name.” Complainant offered support for the contention by asserting that, “Obviously, Complaint must have achieved some measure of fame for Respondent to want to “spend hundreds of hours” since 2008 to create the site.” Complainant also noted that <ladygaga.com> is Complainant’s official website and it was registered on June 4, 2006 which was two years prior to Respondent’s registration of the disputed domain name.
Complainant further asserted that she had released at least one single record and had performed live and on television on numerous occasions under her stage name and that her single recording was released three months prior to Respondent’s domain name registration. Complainant additionally argued that Respondent’s use was not fair because it was not for comparative advertising, news commentary or reporting or for the nominative purpose of identifying Complainant’s music and related goods and services. Complainant reiterated her prior assertions that Respondent was intentionally diverting users away from Lady Gaga and also newly contended that Respondent’s actions were the basis for initial interest confusion. Complainant also asserted that Respondent’s establishment of other fan sites indicated a habit of registering domain names that reflect others’ trademarks and that the totality of Respondent’s behavior supported the conclusion that the disputed domain was registered and is being used in bad faith.
Respondent’s Additional Submission was embodied in Respondent’s Objection to Complainant’s Untimely Filed Additional Submission. Respondent contended that she had never been a defendant in a trademark or copyright infringement lawsuit and that she permissibly owns and operates other fan sites. Respondent also claimed that the fan site was operating for a period of three years without any objection from the Complainant and that numerous other domain names have been established and currently exist that encompass Complainant’s name. Respondent further asserted that Complainant ignored Respondent’s e-mails and request to discuss the matter by phone prior to filing a complaint against her.
Complainant, Ms. Stefani Germanotta, professionally known as Lady Gaga, is a world renowned artist who has sold millions of albums globally and has been labeled by various sources as one of the world’s most powerful and influential performers. Lady Gaga has acquired substantial secondary meaning in her now famous name and owns federal registrations for the mark LADY GAGA for a variety of goods and services. She also owns numerous websites including an “official” website at <ladygaga.com>. Respondent is an individual who self-identifies as Miranda in her e-mails and who does not dispute the notoriety of Complainant but instead asserts that she is supporting Complainant’s fame through the free publicity she is giving Complainant through the operation of the fan site to which the disputed domain name resolves. Respondent registered the disputed domain name on June 20, 2008, shortly after Complainant’s initial debut and prior to the worldwide release of Complainant’s first single and first album which is ironically entitled “The Fame”.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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 Complainant provided evidence that she is the owner of the following three federal trademarks in various classes registered with the United States Patent and Trademark Office ("USPTO"):
1. LADY GAGA (Reg. No. 3,695,038 registered October 13, 2009);
2. LADY GAGA (Reg. No. 3,695,129 registered October 13, 2009);and
3. LADY GAGA (Reg. No. 3,960,468 registered May 17, 2011).
These trademark registrations establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)”).
The Complainant further asserts that she has common law rights in her stage and performance name and brand of LADY GAGA, which predate her trademark filings. The Panel takes note that Complainant’s original trademark filings identify September 1, 2006 as the date of first use of the LADY GAGA name and mark in reference to entertainment performances and live musical arts. However the Panel notes that the date of first use is but one reference in determining rights to a mark and cannot, without more, be relied upon to conclude when protectable common law rights have been established.
The Complainant further argued that she had already enjoyed a lifetime of achievements since she embarked on her professional music career in the mid-2000’s and noted her variety of achievements at length, including Billboard Hot 100 singles from Complainant’s first album release on April 8, 2008. Complainant contends that her usage of the LADY GAGA mark since September 1, 2006 allows a finding of common law rights in that mark under Policy ¶ 4(a)(i). The Panel agrees that at some time between Complainants initial adoption of the LADY GAGA mark and her initial filing for federal registration that Complainant did establish rights in the name and mark that entitled her to common law trademark protection. The Respondent did not disagree with any of the Complainant’s chronicle of achievements since her debut album nor did the Panel see any grounds for disputing Complainant’s current global fame. However none of these achievements either independently, nor taken together, establish a specific point at which Complainant acquired her common law rights.
Complainant’s argument that obviously there was some measure of fame recognized by Respondent in order to motivate her to establish the website is of no assistance. The mere establishment of a fan site does not establish fame or common law rights. The fact that Complainant established what she later refers to as her official website at <ladygaga.com> is likewise insufficient. Registration of a domain name alone does not confer common law trademark rights to the registrant. While the Panel is willing to concede to Complainant’s request that it recognize she established common law rights at some time, Complainant’s failure to establish a specific time minimizes the effect of such a finding.
Whenever Complainant’s common law rights arose, it is clear that Complainant, today, owns rights in the LADY GAGA trademark and that satisfies the requirements under the first element, which addresses whether “the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 1.4 (2nd ed.), http://www.wipo.int/amc/en/domains/search/overview/index.html#14 [hereinafter WIPO Decision Overview 2.0].
Complainant asserts that the <ladygaga.org> domain name is identical to its LADY GAGA mark. Complainant argues that the domain name is identical in sound, appearance, meaning, and overall commercial impression to the LADY GAGA mark. The Panel notes that the disputed domain name only removes the space between the terms of the mark, while also adding the generic top-level domain (“gTLD”) “.org.” Therefore, the Panel finds that the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant has failed to make such a prima facie case here. Although the WHOIS information for the disputed domain name identifies “oranges arecool XD” as the registrant of the disputed domain name, which the Panel finds is not similar to the domain name or mark, the Panel also notes that Respondent did not claim to be commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). However that finding is not dispositive in this instance.
Respondent alleges, and Complainant does not dispute, the fact that the Respondent is operating an unofficial fan site at the disputed domain name. Respondent asserts that she offers Complainant’s tour dates, photographs, video clips, a fan blog, and autobiographical information about Complainant, and that her usage of the domain name is purely non-commercial. Respondent states that she does not have any sponsored links or links to third-party websites which market and sell merchandise bearing Complainant’s trademark and Complainant has not indicated that Respondent has any links besides one to Respondent’s website designer and another to a website owned by Complainant. Respondent argues that she has not profited from any of her usage of the domain name in question and is in fact directing Internet users to a website promoting Complainant through its production company. The Respondent also states that she has not posted any other links on the website, and that she is merely using the domain name to promote Complainant through a fan website, a use which is authorized under Policy ¶ 4(a)(ii).
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). See 2001 White Castle Way, Inc. v. Jacobs, D2004-0001 (WIPO Mar. 26, 2004) (holding that the respondent had rights or legitimate interests in the <patbenatar.com> domain name where the respondent was operating a fan website with information on the complainant, a recording artist); see also Pearl Jam, A Gen. P’ship v. Streaming Digital Media Dot Com, FA 235831 (Nat. Arb. Forum Mar. 29, 2004) (“The Panel is of the view that Respondent’s evidence and Complainant’s admissions support the conclusion that Respondent’s noncommercial use of the Domain Name in association with Respondent’s fan site is ‘legitimate.’”); see also Smith v. DNS Research, Inc., FA 220007 (Nat. Arb. Forum Feb. 21, 2004) (“There is significant social value in permitting supporters of performers to express their support and appreciation for them, as part of their First Amendment rights, just as there is a right to criticize public figures under the freedom of speech principles of the U.S. Constitution.”). In this respect, this Panel unanimously supports the view expressed as “View 1” in the WIPO Decision Overview 2.0, ¶ 2.5: “The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature.” http://www.wipo.int/amc/en/domains/search/overview/index.html#25.
Respondent also points out that her website contains unambiguous language that disclaims any association with Complainant. Respondent’s website states the following: (Panel note: misspellings are Respondent’s)
Ladygaga.Org is just a unprofitable unofficial fansite, we do not get money from it. We are not affiliated in any way with Lady Gaga herself, her record label, or her management. I am not Lady gaga and I don not know her unfortunately. This is a fansite only, created by and for fans of lady gaga. All the material posted here is owned by the respective owners. We do not claim any kind of copyright on them, Thanks.
Further, Respondent notes that upon reaching her website consumers immediately read “Your best #1 online fan resource of Lady Gaga,” and “Welcome to your #01 unofficial Lady Gaga fansite.” Respondent argues that such language on her website is immediately recognized by Internet users as a valid disclaimer of association. The Panel agrees and finds that Respondent’s use of these disclaimers on her website prior to the filing of the complaint further supports the conclusion that Respondent has rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that the respondent was using the domain name in connection with a bona fide offering of goods and services where the respondent was not holding itself out as the complainant given its disclaimer on the website); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (“The fact that Respondent is using the . . . visible disclaimer on its website further indicates a bona fide offering of the traffic school services.”).
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.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Complainant has not proven this element.
As the Panel has concluded that Complainant has failed to show that Respondent lacks rights or legitimate interests in the <ladygaga.org> domain name pursuant to Policy ¶ 4(a)(ii), the Panel need not consider whether Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).
Because the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ladygaga.org> domain name REMAIN WITH Respondent.
David H. Bernstein, G. Gervaise Davis, and Darryl C. Wilson, Chair, Panelists
Dated: September 21, 2011
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