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The Penalty of Fame: Fans and Adoration

When it comes to fan sites there are two views, the tolerant and the intolerant. The intolerant is illustrated in Tom Welling v. Kenneth Gold, FA1106001393893 (Nat. Arb. Forum July 29, 2011): “Here, the Respondent has used the Complainant’s name without any adornment in a domain name which gives rise to a website. It does not matter that the website is a ‘fan site’. The Panel need not enquire whether the Respondent’s motivation is commercial or noncommercial, nor whether he does or does not receive monetary compensation.” The tolerant is illustrated in Ms. Stefani Germanotta v. oranges arecool XD, FA1108001403808 (Nat. Arb. Forum September 21, 2011). It would be interesting to investigate the respective panelists for national temperament on this issue. The single member Panel for Tom Welling is from New Zealand; the three-member Panel for Stefani Germanotta are Americans.

In Tom Welling, the Respondent captures the actor’s name, <tomwelling.com>; in Stefani Germanotta, the Respondent captures the persona of the singer, Lady Gaga, <ladygaga.org>. Panelists who subscribe to the intolerant view focus on impersonation – “any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair.” The tolerant view takes into account the reality of both the website as well as the enthusiasms of fandom: “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’.”

One of the benefits of notoriety for entertainers is commercial success and adoration; but it comes with a burden. “The Complainant cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.” Domain names that resolve to fan sites are protected under paragraph 4(c)(iii) of the Policy for their noncommercial or fair use of the complainant’s trademark. This is found to be the case with <ladygaga.org>. However, the holding of a domain name sanctioned under paragraph 4(c)(iii) does not so much recognize a “right” as it does a “legitimate interest.”

The distinction between a right and a legitimate interest is important, and in Stefani Germanotta it is expressly noted. A domain name holder with a legal right, someone (for example) who has a right concurrent with the trademark holder, has all the rights of a property owner. (This last observation comes with some qualifications too extensive to discuss in a short Note). A holder with a legitimate interest holds legitimately only so far as it is making a “noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Thus, for the moment “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.” However,

[i]f 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 refiling and, depending on the circumstances, could lead a Panel to a different outcome than the one reached by this Panel in the present matter.

In other words, if use changes to undercut a defense under paragraph 4(c)(iii) the complainant has an actionable claim to arbitrate anew the question of rights in a second proceeding. There is no res judicata effect under UDRP or the Anticybersquatting Consumer Protection Act where the subsequent proceeding or action is for subsequent conduct. The reason is noted in Storey v. Cello Holdings, 347 F.3d 370 (2nd Cir. 2003): “Because Cello’s ACPA cause of action is predicated on conduct that post-dated the First Action, we hold that res judicata does not bar the Instant Action.”

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