Of all the WIPO Views on Selected UDRP Questions, two stand out for Panels being in disagreement. Criticism sites (paragraph 2.4) and Fan sites (paragraph 2.5). For answers to all the other questions there is consensus. The two questions are as follows:
2.4 Can a criticism site generate rights or legitimate interests in the disputed domain name?
2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?
This Note focuses on fan sites. In most instances celebrities (athletes, artists, authors, entertainers, film stars etc.) do not have registered trademarks and come to the UDRP proceedings hoping to persuade the Panel that they have common law rights to their names. Their problem and the registrant-fan’s right or legitimate interest in the domain name or its good faith in registering the domain name is illustrated in Tom Welling v. Kenneth Gold, FA1106001393893 (Nat. Arb. Forum July 29, 2011). The Complainant was an already known actor when the Respondent registered <tomwelling.com> in 2001. Laches is not a defense and, although “sleeping on one’s right” makes it more difficult to prove bad faith, when there is only one “Tom Welling” or one of any historic and current distinctive signifier, the difficulty evaporates.
The two views for operating a fan club site are as follows:
View 1: 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. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate noncommercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site’s subject).
View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the internet.
The Panelist in Tom Welling is up front in adhering to the second (less tolerant) view of registering a celebrity’s name. In this case, the Respondent’s website contains some advertising that “relate[s] to goods and services unrelated to the Complainant or his show” and obtains a benefit in exchange for a banner headline. The level of commercial activity is a significant factor in both views, but View 1 is more tolerant of “incidental commercial activity.” The Panel concluded that “[n]ot all commercial arrangements require the exchange of money.” Pertinently,
What matters is that Internet users are likely to go to the site expecting it to bear some endorsement from the Complainant and/or some official connection with him. If the disputed domain name had contained some indication that the Internet user was entering a fan site (such as, for example, <tomwellingfanclub.com>, the position might be different.
As noted in another case, “[e]ssentially, any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair,” David Foox v. Kung Fox & Bill Hicks, D2002-0472 (WIPO July 25, 2002) . The crux, then, is impersonation. If Internet users come to the celebrity’s website with an expectation and are disappointed they will have been duped, “but in any event the registrant’s objective of bringing them there will already have been achieved.”