Fan, Foe or Free-Rider: CDAS Defeats Cybersquatter that Sought to Capitalize on Celebrity Client’s Famous Name

Case Highlights Benefits of Trademark Protection and Potential Risks in Posing as a Fan Online

A growing and unsettling trend in the legal field of domain name disputes is the prevalence of domain registration for bad faith purposes, such as to bait the public into thinking that there is an association between a website operator and a famous brand or person.  Recently, Cowan DeBaets Abraham & Sheppard LLP (“CDAS”) brought a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP” or “The Policy”) which demonstrated the potential pitfalls of this trend. In Sofia Vergara v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard, WIPO Case No. D2014-2008, Sofia Vergara (“Ms. Vergara”), represented by CDAS, prevailed before the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center, due to the demonstrated bad faith conduct of Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard (collectively, Respondent) in their registration of the domain name www.sofiavergara.org (the “Domain Name”).

Ms. Vergara is widely recognized as one of the more prominent celebrities in the world, as a Golden Globe®, Primetime Emmy® and SAG Award nominated actress, the spokeswoman for brands such as Pepsi & CoverGirl, and as the creator of personal fragrance, apparel, footwear, accessory, clothing, jewelry and furniture lines. Through Ms. Vergara’s numerous successes, Ms. Vergara has acquired ownership of several registered trademarks built around her name. As CDAS Partner Fred Bimbler said, “While working with Sofia and her team for many years, we have made constant efforts to build her brand and name, and after experiencing the work that goes into creating such a brand, I feel more celebrities should actively seek to protect their name from improper use.”

The Respondent registered the Domain Name under a private name. The Domain Name resolved to a website which featured Ms. Vergara’s personal photographs directly taken from her Instagram account and from her official website, “www.sofiavergara.com”.  The Domain Name further included several hyperlinked advertisements, as well as numerous entertainment and celebrity-related headlines which, when clicked, resolved to an unrelated celebrity gossip website, thus demonstrating the true nature of the website: a landing page for pay-per-click advertisements.

On behalf of Ms. Vergara, CDAS filed a complaint, requesting the transfer of the Domain Name to Ms. Vergara based on the existence of each of the three elements set forth in Paragraph 4 of the Uniform Dispute Resolution Policy: (i) that the Domain Name was identical or confusingly similar to a trademark or service mark in which the Complainant (Ms. Vergara) has rights, (ii) that the Respondent had no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name had been registered and was being used in bad faith.

In considering the identical nature of the Trademarks and the Domain Name, the panel identified that, disregarding the generic domain “.org” (which is insufficient to distinguish the domain name from a mark), the only difference between the domain name and the Sofia Vergara trademark was the omission of the space between the separate words “Sofia” and “Vergara”, a common type of omission in domain name usage. Therefore, panel concluded that the marks were in fact identical in nature.

The panel then considered Respondent’s rights in the Domain Name and concluded that due to the complete lack of Respondent’s obtaining permission from Ms. Vergara to use her name as a URL, and the fact that the Respondent, in any context, had never been commonly known or referred to by the Domain Name, Ms. Vergara had established a prima facie case that Respondent owned no rights in the Domain Name. Respondent answered by asserting that his use of the Domain Name was for a fan site, emphasizing the use of the tag line “We Love Her” to show that the purpose of registration was not commercial, and thus protected under 4(c)(iii) of the Policy, which allows for “a legitimate, non-commercial use of a domain name, without intent for commercial gain.” The panel rejected this assertion, stating that since the Domain Name prominently featured posts about other celebrities as well as pay-per-click advertisements not pertaining to Ms. Vergara, and since the tag line asserted as evidence was ambiguous in nature, the claim that the Domain Name was a not-for-profit operation was precluded by the prima facie case established by Ms. Vergara.

Lastly, the panel concluded that the Respondent’s use of the Domain Name was done in bad faith. Primarily, the panel considered the fact that the majority of content featured on the Domain Name had no association with Ms. Vergara, thus inferring the intent to use the Sofia Vergara name and trademark to improperly generate additional revenues via pay-per-click advertising. Additionally, the panel considered the Respondent’s offer to sell the Domain Name for $10,000 following Respondent’s initial receipt of a letter of demand from CDAS, an amount which was determined to be far in excess of the cost to register the Domain Name. As WIPO had previously established, a “settlement” offer to sell a disputed domain name may not be appropriate when the Respondent lacks any legitimate rights or interests in the Domain Name, and this case was no different.

This case should remind celebrities and digital IP infringers alike that individuals may obtain rights in their names through their achieved prominence and notoriety. More importantly, this case is also another example of the dangers associated with registering domain names consisting of others’ trademarks or names, such as the former www.sofiavergara.org, in bad faith – and that a would-be cyber-squatter cannot so easily get away with putting up a “fan site” smokescreen. As CDAS Partner Eleanor Lackman said, “It is unfortunate that many people seem to think that they can set up websites that look like fan sites but really are designed to free-ride on someone else’s fame.  We are glad that the arbitrator saw through the registrant’s disingenuous attempts to cloak his acts of cyber-squatting as legitimate free speech.”

The CDAS team handling this matter for Ms. Vergara consisted of Eleanor M. Lackman, Scott J. Sholder and Joshua S. Wolkoff.