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Fan sites & the UDRP

I’ve had several inquiries lately from domain owners about their ownership and use of “fan sites,” or sites that may incorporate a trademark of a famous person or business for the purposes of talking about that person or business, collecting and republishing news about them, and activities like that. The questions I get are, does the trademark owner have the right to force me to give them the domain name, am I cybersquatting on the trademark owner’s rights? The answer, at least under the UDRP, isn’t 100% clear, but there are some general guidelines to keep in mind.

First, as a threshold matter, any fan site must be “clearly active and noncommercial.” What does that mean? It means you can’t have a blank page there, you have to be making active use of it; mere passive holding of a domain name is unlikely to be held to be a “fair” use. It also means that the site must not be commercial in nature. More on that point in a bit.

As I said, this is not what I would call a “settled” area of UDRP jurisprudence. Under WIPO’s Overview 2.0, #2.5, there are two prevailing viewpoints.

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 non-commercial 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). (emphasis added)

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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. (emphasis added)

Under the first view, a fan site which includes only a very limited number of advertisements, perhaps to offset hosting charges, might be held to be incidental or ancillary. It’s important to stress the might portion of that sentence. How much is too much advertising? It’s difficult to say. But abundant ads in sidebars and banners and footers of every page will likely result in the site being held to not be a legitimate, noncommercial fair use of the trademark. Obviously, no ads is the safest route to take, but may be the most difficult to implement.

Under the second view, the inquiry goes to the intent of the registrant. Any attempts to misleading visitors or imply a false assertion of sponsorship or connection between the registrant and the trademark owner will not be looked upon favorably, whether there are ads or not. Similarly, if the business or individual is being prevented from reflecting their own mark in the gTLD space because of the fan site, that use may not be legitimate. Obviously, this is most often seen in the case of .com domains, for example, this NAF case. But for a counterpoint, check out this case from WIPO. See also my blog post regarding cybersquatting and the 9th Circuit’s nominative fair use doctrine. I think it’s an open question whether a trademark owner has a right to all of the trademark.gTLD domains (i.e. the .net, .org, .info domains as well as the .com domain). I think there’s a good argument to be made that fair and noncommercial use of a .net or a .org as a fan site is probably stronger than a .com, and probably strongest where the trademark owner already owns the .com.

So, the bottom line is, a fan site may be defensible from attack in a UDRP proceeding, but only if a few guidelines are carefully observed in setting up the site. The further a registrant strays into commercial activity, the less likely it is that a UDRP panel will agree with the argument that the site is making fair use of the trademark.

Tagged celebrities, common law trademarks, confusingly similar, fair use, fan sites, registered trademarks, rights or legitimate interests