WIPO – No fan site for tribute band

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel ordered the transfer of a domain name that exactly matched the name of a famous pop group and belonged to a tribute band.

The decision highlights the fact that genuine fan sites conferring a legitimate interest on the holder of a domain name that is identical or confusingly similar to a complainant’s trade mark are quite rare, especially when the domain name at issue is identical or very similar to the trade mark, thus creating an implied sense of affiliation. Whilst previous panels have found that a limited degree of incidental commercial activity may be permissible for a fan site in certain circumstances (for example to offset registration or hosting costs), where such commercial activity is more than incidental (for example use to promote a tribute band, as in this case) then respondents are generally unable to rely on the “fan site” defence.

The Complainant was Brother Records, Inc., of Beverly Hills, California, a recording company that owned the intellectual property rights relating to the pop group known as The Beach Boys. The Beach Boys were formed in 1961 and had sold an estimated 100 to 350 million records worldwide. The Complainant owned a number of registered trade marks in THE BEACH BOYS, the earliest of which was registered in 1978.

The Respondent was David J. Roberts of Good Vibrations, a tribute band based in the United Kingdom.

The disputed domain name was <beachboys.org> (the “Domain Name”), which was registered on 14 May 2002. It was pointing to a website promoting the Respondent’s services.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) The 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.

As far as the first limb is concerned, the Panel is first required to assess whether a complainant has relevant trade mark rights, regardless of when and where such trade mark was registered and, secondly, whether the disputed domain name is identical or confusingly similar to such trade mark.

In the present case, the Panel was satisfied that the Complainant owned relevant trade mark rights in the registered trade mark THE BEACH BOYS and that this was confusingly similar to the Domain Name because the deletion of the word “the” was not significant and the trade mark was recognizable within the Domain Name.

In light of the above, the Panel ruled that the Complainant had satisfied the first element of the UDRP.

As to the second limb and a respondent’s rights or legitimate interests (or lack of them), a complainant must prove that a respondent had no rights or legitimate interests in respect of the domain name in question. A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise. If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the UDRP.

In the present case, the Panel found that the Respondent had not used the Domain Name in connection with a bona fide offering of goods and services. Although the Respondent was a legitimate tribute band, the Panel was of the opinion that the Respondent’s use of the Domain Name was not legitimate. The Complainant argued that the Respondent’s use of the Complainant’s trade mark in the Domain Name was an attempt by the Respondent to divert Internet users looking for information about The Beach Boys to the Respondent’s website, and the Panel agreed. In the Panel’s view, the fact that the Respondent’s use of the trade mark in the Domain Name was unauthorized meant that its use could not be considered bona fide.

The Panel also found that the Respondent was not commonly known by the Domain Name, but by the name Good Vibrations.

Finally, the Panel found that Respondent was not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. In the Panel’s opinion, the website at the Domain Name could not be likened to a genuine fan site, the operation of which could confer rights or legitimate interests under some circumstances. Instead, the Panel found that the website at the Domain Name was being used to promote a tribute band operating for commercial gain. In view of this, the Panel decided that the use of the trade mark in the Domain Name was not legitimate, and made reference to section 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”).

Although it would be clear to some Internet users upon accessing the website at the Domain Name that the Respondent was a tribute band and thus not associated with The Beach Boys, the Panel found that the use of the Complainant’s trade mark in the Domain Name created an implied affiliation with the Complainant and that this was not necessary. In the Panel’s opinion, the Respondent could have selected another term that would not have carried the same implied affiliation, and that made the Respondent’s position as a tribute band clearer (as explained in section 2.5 of the WIPO Overview 3.0).

Given the above prima facie case that the Respondent did not attempt to rebut, the Panel considered that the Respondent had no rights or legitimate interests in the Domain Name and that the Complainant had satisfied the second limb of the UDRP.

In relation to the third limb, a complainant is required to demonstrate that the disputed domain name was both registered and used in bad faith.

The Panel found that as the Respondent was a tribute band for The Beach Boys, it was clear that the Respondent had registered the Domain Name with the Complainant’s trade mark in mind, with the likely intention of attracting fans of The Beach Boys to the corresponding website.

The Panel considered that, by registering and using the Domain Name, the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship or affiliation that website or its services, in accordance with paragraph 4(b)(iv) of the UDRP. The Panel underlined that the Respondent had been given the opportunity to establish its good faith use of the Domain Name, but had chosen not to do so.

In light of the above, the Panel found that the Complainant had satisfied the third element of the UDRP and therefore ordered the Domain Name to be transferred.

The decision is available here.

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