To make a website using a celebrity’s name as the domain name, a fan has to toe the line of the UDRP – the Uniform Domain Name Resolution Policy, which all website operators agree to accept as a means of resolving disputes over contested domain names. Under the UDRP, a complainant can have a website’s domain name cancelled or transferred by showing:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name owner 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.
Celebrities can usually show the first element pretty easily, if they’ve used their name as a trademark. But for genuine fan sites, the second two are much harder to prove – a fan has a legitimate interest in showing their appreciation for their favorite celebrity, and that’s not acting in bad faith. But bad faith can be shown (and a lack of legitimate interest can be imputed) when the website owner is seeking commercial gain by creating a likelihood of confusion.
Which brings us to Sofia. She filed a UDRP complaint with WIPO, the World Intellectual Property Organization, one of the leading sites to resolve domain name disputes. Her complaint contended that sofiavergara.org, purportedly a fan site, was simply trading off her name for ad clicks, and demanded that it be transferred. WIPO agreed, largely because the website features a feed of gossip about other celebrities. (Check out that link ASAP, if you’re interested – once the transfer ordered by WIPO takes effect, Ms. Vergara will own the domain name and the site won’t look the same.)
But it’s instructive to compare a site like sofia-vergara.org. The hyphen wouldn’t make a difference to WIPO, but the content is different. Everything on sofia-vergara.org appears to be about Sofia herself. A fan has a right to express their appreciation of a celebrity, whether or not the celebrity wants it. That’s one reason why we won the ronpaul.com and ronpaul.org disputes at WIPO: “expressing support and devotion to Ron Paul’s political ideals is a legitimate interest that does not require Complainant’s authorization or approval.” Glad to see another UDRP decision based on respect for the balance of free speech rights and trademark interests.