A string of number one hits and worldwide notoriety
weren't enough to bring Lady Gaga success in a domain name
dispute over the use of her stage name. Earlier this fall Lady
Gaga, whose real name is Stefani Germanotta, failed to convince an
arbitration panel that the domain name ladygaga.org was being used
illegitimately by one of the singer's fan sites.
Domain names are allocated through accredited registries that
use a central registry system overseen by the Internet Corporation
for Assigned Names and Numbers (ICANN). Disputes over domain names
are resolved in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the Policy). In order for a domain name to be
cancelled or ordered to be transferred under the Policy a
complainant must show that: the domain name is identical or
confusingly similar to a trademark or service mark in which the
complainant has rights; the respondent has no rights or legitimate
interests in respect of the domain name; and the domain name has
been registered and is being used in bad faith.
Lady Gaga managed to successfully convince the arbitration panel
that the ladygaga.org domain name was identical to the trade-mark
"Lady Gaga," in which she has rights. She relied on three
registrations filed with the United States Patent and Trade-mark
Office, the earliest of which were registered in October 2009, as
evidence or her rights in the mark. The Panel refused to accept
that she had acquired common law rights in the mark as early as
September 2006, when she claimed to have first used the mark.
Nonetheless, the Panel conceded that at some point she had acquired
common law rights in the mark Lady Gaga, even if it could not
pinpoint the exact time. It also found that that the domain name in
question was identical to the trade-mark, despite the lack of space
between the two words and the addition of the ".org."
It was the second element that proved fatal to Lady
Gaga's claim. The Panel held decisively that the
non-commercial fan site was a bona fide offering of goods
or services, or a legitimate non-commercial or fair use of the
domain name. The Panel was particularly swayed by the fact that
there were multiple notices on the website indicating that it was
an unofficial site. Nonetheless, the driving consideration was
clearly that the Respondent had no intent to profit from the
website. The Panel warned that any future, profit-driven changes to
the website might cause the dispute to be decided differently in
future. Having found that the domain name was being used for a
legitimate purpose, it was unnecessary to consider whether the
Respondent had acted in bad faith.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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