Dominic Thiem v. David Pakozdi
WIPO: Case No. D2020-1631
Domain name: <dominicthiem.com>
In the sporting world, a great measuring stick of whether or not you have “made it” is the existence of a “fan site” in your honour. In some cases, however, your fans may have an alternate agenda. In a recent WIPO decision, U.S. Open winner Dominic Thiem discovered that a fan of his had not erected a digital mural in honour of his tennis achievements, but rather as a roundabout way of earning some quick cash.
The first WIPO element of confusing similarity was easily satisfied, as the domain name was identical to the tennis star’s name (they say imitation is the sincerest form of flattery). The main issue at hand was whether this constituted a genuine fan site, as there are limited circumstances in which a bona fide, non-commercial fan site may not violate the lack-of-rights or bad-faith requirements (see WIPO Overview 2.7).
These cases generally do not dispute confusing similarity, as celebrities by and large hold trademark rights to their name and the sites in question either contain the name or reference it positively (such as neilbrownisgreat.com). The second UDRP element, that the respondent must not have rights to that trademark, has yielded mixed results.
This is a harder path for a respondent to defend. The WIPO Overview states that for a fan site to satisfy this hurdle, the site “must be active, genuinely noncommercial, and clearly distinct from any official complainant site”.A 2007 case concerning a tribute site to a recently deceased artist noted that the site was bona fide and non-commercial, and the complaint failed at this hurdle. This case was somewhat anomalous; most fan sites cannot resist a humble pay-per-click advertisement and therefore fail for commerciality! Similarly, Panels often find that such a site does not effectively distinguish itself from a celebrity’s official site, creating unacceptable confusion.
The most likely place for a fan site to succeed is by demonstrating that the site was not registered or used in bad faith. Panels have found on several occasions that a domain name which satisfies the first two UDRP elements may fail on the third element if the site is not used to disrupt the Complainant’s business or to turn a substantial profit. A notable example of this is the Legend of Zelda decision, in which Nintendo’s attempts to recover <legendofzelda.com> from a keen fan failed as the fan was not seeking to sell the name, sought no commercial gain and had not engaged in a pattern of disruptive conduct. So there was really no bad faith. If anything, it was probably good faith as Nintendo seems to have done well out of the publicity .
DOMINIC THIEM’S CASE
Unfortunately for our avid tennis fan, his tribute to Dominic Thiem was not the bona fide fan site he hoped it to be. The site was largely blank, with only a smattering of outdated statistics and of course, a touching tribute to Thiem’s success:
“Do you want to be the new administrator of this fanpage?
Send an email to: -----------
The price of the domain: 3500 USD”
Thiem was clearly not flattered by the offer, and his claim succeeded by satisfying all three UDRP elements.
Furthermore, this particularly enthusiastic tennis fan also displayed links to a series of near identical fan sites of other tennis players, all registered in 2011. It would appear as though he had been monitoring the success of junior players in 2011, and had registered domains for each of them in anticipation of their future success!
The key takeaway from this case is that a fan site with a domain name that is confusingly similar to the celebrity in question will be hard to defend from a WIPO complaint. Genuine fans must ensure that their sites are bona fide, regularly updated, and for no commercial gain.
And of course, if you enjoy a round of tennis at your local club and suddenly find a domain name in your honour, you can take that as a ringing endorsement from cybersquatters everywhere that you have a promising future in the game! As Oscar Wilde said , the only thing worse than people talking about you is people not talking about you.