In August, Stefani Joanne Angelina Germanotta – professionally known as Lady Gaga – looked toward the National Arbitration Forum (NAF) to obtain control of the domain name <ladygaga.org>. The domain name had been registered in June 2008 by “oranges arecool XD”, owner of over 2,000 domain names including <audrina-patridge.org> and <even blakelively.com>. While Ms. Germanotta not only has common law rights to the mark, but also owns three federal LADY GAGA trademarks, the Panel concluded that Ms. Germanotta was not entitled to the <ladygaga.org> domain.
You might find this decision shocking, but it is not particularly surprising – at least to those familiar with current cybersquatting policies. For those unfamiliar with the term, cybersquatting refers to the registration of a domain name, with bad faith, to profit from the goodwill of another’s trademark. A cybersquatter registers a domain name with the intent of either (1) collecting income by placing advertisements on the website linked to that domain name or (2) selling that domain at an inflated place to the actual owner of the trademark contained within that domain name. Cybersquatting may take one of a number of different forms. In typosquatting, for example, cybersquatters rely on typographical errors made by Internet users when inputting a website address into a web browser. This may include a common misspelling of the intended site (i.e. <exemple.com> instead of <example.com>), a differently phrased domain name (i.e. <examples.com>), or as in the case of Germanotta v. oranges arecool XD, a different top-level domain (i.e. <example.org>).
A victim of cybersquatting has two primary recourses: the victim can sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. §1125(d)(1), or turn towards the Uniform Dispute Resolution Policy (UDRP), a policy promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN). Ms. Germanotta brought her case under the latter of the two – the UDRP – likely because this resolution process is a much faster and less-expensive system of arbitration. Nevertheless, she proved unsuccessful because she failed to prove the following three elements required under paragraph 4(a) of the Policy: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. While the Panel concluded that the first element was met, the Panel also found that oranges arecool XD’s use of the disputed domain name in conjunction with a fan website was a legitimate noncommercial or fair use of the policy. It thus did not even consider whether Respondent registered and used the disputed domain name in bad faith and concluded that relief should be denied.
Because the avoidance of confusion is such a fundamental tenet of trademark law, I fail to understand why a finding of fair use in this instance should trump a finding of likelihood of confusion. By all means, I am a strong proponent of fair use and thoroughly appreciate its constitutional foundation, and I certainly wouldn’t hesitate to say that oranges arecool XD should be free to own a domain name such as <ladygagafansite.com>. Nevertheless, I have no doubt that a fan would consider Lady Gaga the owner and licensor of the domain name <ladygaga.org> and thus that the Respondent’s ownership of the domain name would deceive the public and serve as a source of confusion. Although oranges arecool XD does title the website “Lady Gaga’s (Unofficial) Fansite,” its inclusion of the term “unofficial” is hardly noticeable and fails to clearly disclaim that the website is in no way affiliated with Ms. Germanotta herself. For these reasons, the Panel’s decision seems particularly unsatisfying. Had the Panel instead weighed the UDRP’s three elements, I believe a much more appropriate outcome would have been reached.
I find the Panel’s decision all the more troubling in light of ICANN’s forthcoming introduction of new generic top-level domains (gTLDs) (.com, .net, .org etc.). As more top-level domains open up, Lady Gaga and other trademark holders will have to litigate additional domain names in the Internet sphere that are likewise confusing. With the endless possibility of new top-level domains, they will certainly have their work cut out for them. But as the UDRP stands, I see a lot of failure in their futures. What do you think? Do you agree with the Panel’s ruling? Do you think that the three elements should be weighed under the UDRP?