Lady Gaga is Not Gaga About

Lady Gaga filed a UDRP action (text) against the owners of <>, and was delivered a loss last Friday. Lady Gaga argued that since the disputed name is identical in sight, sound and meaning to her trademark, that the owners of <> registered thedomain after Lady Gaga’s trademark became famous, and that <> desired only 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.”

The hurdle Lady Gaga was unable to leap over in this UDRP action  with the National Arbitration Forum (NAF)  was convincing the NAF Panel that the owner of <> lacked rights and legitimate interests in the domain name under the UDRP, the second element of a UDRP action.

To summarize, the Panel focused on three key observations. First, the Panel noted that <> is a purely non-commercial website, offering Lady Gaga’s tour dates, photographs, video clips, a fan blog, and biographical information. Additionally, the  only links from <> were one which directed users to an official Lady Gaga site, and another to the web designer’s webpage.

Secondly, the Panel cited previous NAF case law which upheld the notion that use of a disputed domain name in conjunction with a fan website is an acceptable use under the UDRP as it is a legitimate fair use under the UDRP Paragraph 4(c)(iii). Citing a previous case, the Panel reiterated “There is significant social value in permitting supporters of performers to express their support and appreciation for them…just as there is a right to criticize public figures under the freedom of speech principles.”

Lastly, the Panel made notable reference to the disclaimers prevalent on the <> website. Website visitors are immediately greeted with “Welcome to your #01 unofficial Lady Gaga fansite.” On this issue, the Panel stated that Lady Gaga “cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.” Well put.

If you have a domain which is identical or similar to another’s trademark, you are always at risk of an unruly trademark owner filing a UDRP action against you. The first lesson of the day is that you are in a good position within a UDRP action if you make an effort to distinguish your webpage from an official trademark owner, making visitors to your site aware that your webpage is in no way affiliated with the trademark owner.

The second lesson of the day is to make sure that you do not profit from your webpage which has a domain similar to another’s trademark. Be aware that “profit” can be derived in many ways: selling counterfeit products of the trademark owner, selling advertising on your webpage, and linking to other sites which sell products related to the trademark owner, among others.

What’s next for Lady Gaga? Funny enough, there seems to be an identity crisis amongst the owners of <>, and <>, with Twitter accounts @popatemyheart  @gagamonstersnet @PropaGaga all seemingly to lay some type of claim to those domains. Watch out for Gaga!

– ck


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