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Legitimacy of Fan Sites

Fan clubs generally come into existence without express permission and sometimes over the (frequently delayed) objection of the honoree to celebrate his or her life work and achievements. The WIPO Overview poses the following question: “Can a fan site constitute a right or legitimate interest in the disputed domain name?” (paragraph 2.5). There are two views, denominated View 1 (an active, noncommercial fan site may be a legitimate interest) and View 2 (a fan has no right or legitimate interest in a domain name that infringes a celebrity’s trademark). View 1 reads

An active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.

View 2 reads

Respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity.

Even fanatics – “the flip side of critics” as one panelist noted – have a right to establish a fan site. However, the respondent has a heavy burden to establish that the site is pristine; devoted purely to the celebrity without any commercial aspirations. The Panel in Richard Dawkins v. J. Gabriel, FA1004001317157 (Nat. Arb. Forum May 21, 2010) held that the “mixture of links negates the argument of ‘fair use’.” This standard also applies to criticism sites. In neither case can the respondent argue lack of knowledge of the target or celebrity. The sole issue is whether the respondent meets the elements set forth in paragraph 4(c)(iii) of the Policy.

The tolerance expressed in View 1 is defeated if the alleged fan site is neither genuine nor active. In Freddy Adu v. Frank Fushille, D2004-0682 (WIPO October 27, 2004) in which the Panel found that Respondent attempted to cash in on athlete’s success in the guise of a fan club. In Stevland Morris a/k/a Stevie Wonder v. Enrique Matta, FA0805001189962 (Nat. Arb. Forum July 9, 2008) the Panel stated that “[a]lthough the disputed domain name may be non-commercial, it has never acted as a fan site and it therefore fails the second of the requirements for legitimacy set by the WIPO Overview.” Similarly with the domain name registered by the Respondent in Eddy Merckx Rijwielen Cycles NV vs. Irfan Khalil, D2009-0074 (WIPO March 12, 2009)(eddymerckx.com). It is not a defense that the Respondent “has not had the time and the money to create the website but that it is still in the planning process.” Worse yet, the “factual circumstances in this matter are that the website attached to the Disputed Domain Name points to a parking site which largely … offer[s] goods and services that compete with those of the Complainant.”

The term “commercial gain” is construed broadly against the respondent even where the celebrity may receive some incidental benefit of publicity. The website must also be limited to the celebrity honored and not used “to promote other celebrities and, predominantly, advertising of third-party products,” Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006) (<tomcruise.com>). The “fan” in Richard Dawkins argued that his honoree “was ill-known or little known, particularly in the U.S. in 1999, when the Respondent established the domain name.” Although a complainant’s reputation at time of domain name acquisition is an important element, it is not decisive; particularly not decisive in the case of writers, musicians, television personalities, athletes (Freddie Adu), etc. whose reputations grow in time.

This is not to say that a domain name dedicated to the achievements of a writer such as Dawkins should be taken from the fan and awarded to the honoree if the contents demonstrate the respondent’s good faith intent, Swissbike Vertriebs GmbH v. Executive Standard Limited, D2008-0498 (WIPO June 19, 2008) (<raleighbikes.com>) in which the Complainant offered no evidence to rebut the Respondent’s contention that the website is a non-commercial forum targeting fans of Raleigh bikes. The Panel members in Dawkins are subscribers to View 2, the intolerant position.

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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