WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stefani Germanotta and Ate My Heart Inc. v. Deborah Allen
Case No. D2015-2353
1. The Parties
Complainant is Stefani Germanotta and Ate My Heart Inc. of New York, New York, United States of America, represented by Pryor Cashman, LLP, United States of America.
Respondent is Deborah Allen of Orlando, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ladygagafoundation.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2015. On December 28, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on December 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2016. Respondent submitted an e-mail communication to the Center on January 21, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 27, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant Stefani Germanotta, professionally known as Lady Gaga, is a performer and recording artist, and one of the most famous entertainers in the world. Lady Gaga’s company, Complainant Ate My Heart Inc., owns several trademark registrations for the mark LADY GAGA. The LADY GAGA marks cover entertainment services, apparel, and other goods and services, and the first use in commerce of the LADY GAGA marks goes back to September 2006.
In 2012, Complainant Lady Gaga and her mother co-founded Born This Way Foundation, a not-for-profit entity dedicated to “teaching advocacy, promoting civic engagement and encouraging self-expression, with a particular mission to empower young people with the skills and opportunities that will inspire them to create a kinder and braver world.” The Internet website for the Born This Way Foundation is located at “www.bornthisway.foundation”. The home page at this website features a caricature of Lady Gaga.
The Domain Name was registered on November 15, 2015. The Domain Name resolves to a website which features a caricature of Lady Gaga almost identical to the one at the Born This Way Foundation website. Respondent’s website also prominently states that the Domain Name is “for sale” with an asking price of USD 1,000,000. There is a “contact us” hyperlink which reiterates the USD 1,000,000 sale price with the added word “negotiable”.
On December 1, 2015, Complainant’s counsel sent Respondent a cease-and-desist letter. Respondent replied with an e-mail dated December 19, 2015 offering to sell the Domain Name. The e-mail stated in part:
I am proposing the sale of the [Domain Name]. The site was purchased from godaddy.com for the purpose of blogging and possible sale. As you are aware I have listed the site for sale at the best offer and have received 2 offers so far from potential buyers. I have told the possible buyers to wait for 3 days until I am able to receive your offer. I would like to see your domain go to you as you will respect its use and it will be very beneficial to your organization. Lady Gaga Foundation is a direct keyword domain name and is very powerful within the search engines.
Respondent went on to state that she had received prior offers of USD 7,000 from someone in the Dominican Republic and USD 4,000 from someone in California. This Complaint followed four days later.
Meanwhile, at some point after receiving the December 1, 2015 cease-and-desist letter, Respondent altered her website and removed the USD 1,000,000 sale offer. Instead, the Domain Name now resolves to a “blog” site featuring several articles about Lady Gaga and the Born This Way Foundation. The blog articles include: “Lady Gaga Foundation Spends More on Lawyers, Publicity and Consultants than on Charity”; “Lady Gaga’s mom defends charges that Born This Way charity spent millions on overhead and donated only $5,000”; and the like.
5. Parties’ Contentions
Complainant contends that it is entitled to a transfer of the Domain Name because it has satisfied all three elements of the Policy.
Respondent did not reply to Complainant’s contentions. The day after receiving the Center’s January 20, 2016 Notification of Respondent Default, Respondent sent the Center an e-mail simply stating: “I bought this domain for my blog legally through go daddy domains. No one has the right to take it away.”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant clearly holds rights in its registered trademark LADY GAGA. The Domain Name incorporates this distinctive mark in its entirety and adds the descriptive word “foundation”. In the Panel’s view, this additional word does very little to reduce the confusing similarity between the famous mark and the Domain Name. See Stefani Germanotta and Ate My Heart Inc. v. Rola Dowens, WIPO Case No. D2013-1506 (<ladygagadress.com> is confusingly similar to LADY GAGA mark).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate 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.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent registered the Domain Name several years after Complainant’s LADY GAGA mark had become famous. It is obvious from the record that Respondent’s primary objective in registering the Domain Name was to sell it for a profit. Respondent’s claims to have registered the Domain Name for a blog site is little more than a post hoc rationalization, belied by the content at the website – a USD 1,000,000 sale price and no “blog” content – before Respondent received the cease-and-desist letter from Complainant’s counsel. Indeed, Respondent even admitted her motivations in her December 19, 2015 e-mail to Complainant’s counsel, namely, that she registered the Domain Name “for the purpose of blogging and possible sale”.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For essentially the same reason as the Panel concludes that Respondent lacks a legitimate interest in the Domain Name, the Panel concludes that the Domain Name was registered and is being used in bad faith. It is obvious, from Complainant’s fame, the caricature of LADY GAGA appearing on Respondent’s website, and the lack of any statement from Respondent that she was unaware of Complainant, that Respondent had Complainant in mind when registering the Domain Name.
It is equally obvious, from the sale price of USD 1,000,000 appearing at Respondent’s website before she received Complainant’s cease-and-desist letter, that Respondent sought to sell the Domain Name for a price well in excess of her out-of-pocket costs directly related to the Domain Name.
This is a clear case of cybersquatting within the meaning of Policy, paragraph 4(b)(i).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ladygagafoundation.com> be transferred to Complainant.
Robert A. Badgley
Date: February 4, 2016