WIPO and The Invincible Lords of Nature: Domain Names and Fan Sites

A recent decision from the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center added a new wrinkle in the use of a domain name by a fan site. In Giochi Prezioso S.P. A. v. VGMD NetWeb S.L. (Decision No. D2009-0542, July 2, 2009), the panel held that the fan site operator could use a protected name in a domain name as long as there was no commercial use of the domain name or the web site.
The domain name "gormiti.mobi" was registered for a fan site for the action figure game "Gormiti."

For the uninitiated, Gormiti are small plastic action figures that represent warring tribes on the island of Gorm. Since each tribe is associated with an aspect of nature (e.g., earth or water), they are collectively "The Invincible Lords of Nature." The Gormiti are very popular in Europe and have just recently invaded the North American market.

Marc Rue, the respondent, runs a Gormiti fan website at www.gormiti.tv and had registered the domain name "gromiti.mobi" in order to provide the fan site to mobile users. Giochi Prezioso S.P.A., the complainant, is the manufacturer of the Gormiti and the owner of the mark. The complainant runs its own Gormiti site at www.gormiti.com. Under WIPO's Uniform Domain Name Dispute Resolution Policy (UDRP), the complainant has the burden of proof to show that the domain name and the trademark are confusingly similar, that the respondent has no legal right to the domain name, and that respondent registered and used the domain name in bad faith.

The decision in this case hinged on whether the respondent had registered the domain name and was using it in bad faith. The UDRP was specifically designed to address abuses of domain names containing a protected trademark, such as cybersquatting, disrupting the owner's use of their mark or using the mark for commercial purposes. The simple use of the trademark in a domain name does not alone constitute bad faith. In order to find bad faith, t+3he complainant must show evidence of the respondent's improper use of the trademark.

The Panel concluded that there was no evidence that the respondent intended to misuse the domain name for commercial purposes. The complainant did not produce any evidence of commercial use of the domain name and the Panel found no evidence of commercial use when it visited the fan site. The Panel distinguished this case from two earlier decisions where domain names of fan sites were transferred to marks owners. In one case, the respondent planned to sale fan merchandise from his site and in the other, the respondent used the fan site to collected money for the complainant. Both were considered commercial use of the domain name and therefore use in bad faith. Since the Panel found no evidence of commercial activity on the fan site, it concluded that the complainant had not proved the respondent acted in bad faith. The transfer of the domain name was therefore denied.

The decision, however, left unanswered the question of whether running a fan site gave the domain name owner any rights or legitimate interest in the domain name through the doctrine of nominative fair use. Nominative fair use allows a party to use a protected mark to identify the product. Clearly, one could not have a fan site without the use of the protected mark since that is the only way to identify the product. For example, a Gormiti fan site that did not use the word Gormiti would be unlikely to attract any fans. Similarly, a Gormiti fan site without the word Gormiti in the domain name would be more difficult to find on the internet than a domain name that did include the mark. Consequently, it could be argued that running a fan site gives the domain name owner legitimate rights in the domain name, since it would be necessary for the operation of a fan site.

Richard J. Slawson is a practicing attorney and a member of the firm Slawson and Slawson. You may contact him at richard.j.slawson@slawsonandslawson.com or through the web site: www.slawsonandslawson.com.

Copyright 2009.