Ms. Stefani Germanotta, aka Lady Gaga, has just lost a legal dispute over the domain name, a fan site created by the Respondent, oranges arecool XD.  Lady Gaga in August had submitted a complaint to the National Arbitration Forum alleging that the Respondent registered the website in bad faith and in violation of her trademark. A series of claims and additional submissions followed:

Lady Gaga’s Claims

  • Respondent registered the domain name with actual knowledge of complainant’s career and with intent to capitalize on her career
  • Respondent has no rights or legitimate interests in the domain name
  • The domain name is identical in sight, sound, and meaning to Lady Gaga’s trademark and circumstances surrounding registration of the disputed domain name “amply establish registration in bad faith”
  • Respondent is competing with Complainant and preventing her ability to promote herself
  • Complainant had established her common law rights in and to her name prior to Respondent’s illegal registration of it as a domain name
  • Complainant has registered 2 years before Respondent’s site

Respondent’s Contentions

  • The disputed domain name resolves to a noncommercial, unofficial fan site for Lady Gaga
  • The web site “does not have any sponsored links or links to third-party websites which market and sell merchandise bearing Complainant’s trademark.”
  • She is making a legitimate, noncommercial fair use of subject domain name, without any intent for commercial gain to misleadingly divert consumers or to tarnish any rights Complainant may assert
  • Complainant failed to establish common law rights in the mark
  • Complainant owns several websites and therefore Respondent is not disrupting Complainant’s ability to promote herself
  • Respondent’s websites contained cross-links to Complainant’s websites
  • Respondent also claimed the fan site operated for three years without objection from the Complainant and that numerous other domain names have been established and exist that encompass Complainant’s name

Lady Gaga sought relief by having Respondent transfer the domain name.  To obtain an order for that transfer, Complainant must prove these three elements:

  1. The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  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.

The National Arbitration Forum held on Sept. 21 that Complainant proved the first element, but failed to prove the second and third elements.  The fan site did not create profit nor did it sell goods and services and therefore was protected by  fair use. will continue to entertain all the little monsters out there.