Out-Law News | 17 Oct 2000 | 12:00 am | 1 min. read
A three member panel of the World Intellectual Property Organisation (WIPO) found that the domain name was identical to registered trade marks owned by Madonna and that Parisi had no legitimate interests in respect of the name.
Parisi had purchased the domain name from a previous owner for $20,000. He then registered MADONNA as a trade mark in Tunisia. He operated the web site at madonna.com originally as an adult entertainment portal and contained a disclaimer stating that his site was not affiliated to or endorsed by the Catholic Church, Madonna College, Madonna Hospital or Madonna the singer. He then removed the sexually explicit material and left the disclaimer and the words “Coming soon Madonna Gaming and Sportsbook.”
The panel said it did not find Parisi’s claim of rights to the name persuasive. It noted that he had been involved in previous similar disputes. It noted that he had failed to provide a reasonable explanation for his choice of Madonna as a domain name. It took the view that he was trying to attract users for commercial gain by trading on the singer’s trade mark. Regarding Parisi’s trade mark, the panel said:
“If an American-based Respondent could establish 'rights' vis a vis an American Complainant through the expedient of securing a trademark registration in Tunisia, then the ICANN procedure would be rendered virtually useless. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”
It also dismissed Parisi’s claim that he was hoping to transfer the domain name to the Madonna Hospital in Nebraska: "The fact that others could demonstrate a legitimate right or interest in the domain name does nothing to demonstrate that Respondent has such right or interest.”
The panel viewed Parisi’s disclaimer as insufficient and reiterated its explanation for his actions as being an intentional effort to trade upon the fame of Madonna and her trade mark for commercial gain.
Parisi said in response to the panel’s decision to transfer the name to the singer that he and his lawyers will consider whether to take further action. He adds:
“We were not happy that the lead panellist in the Madonna.com case Mr. Partridge is a trademark attorney who was the plaintiff lawyer in the Brunswick.com WIPO case… We also own Brunswicksucks.com and he knows that and yet he is lead panelist in this case. It is not fair to respondents to have plaintiff lawyers who represent complainants to also sit as judges in these hearings.”