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OVERVIEW A plethora of domain name cases have been filed over the past couple years, many of which have been decided by the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center. The majority of cases have been decided in favor of complainants who argue that their trademark rights in their domain names have been violated. The results from these cases have not necessarily created a perfectly consistent body of law. Moreover, some of the cases in and of themselves appear to have been decided in a fairly anomalous fashion. One such case is worthy of discussion. MADONNA CASE EXAMPLE Not too long ago, pop star Madonna legally pursued and obtained the domain name “Madonna.com” from the previous domain name owner. An examination of the circumstances of this case reveals that this may not have been the correct result. The world-known Madonna Ciccone has U.S. trademarks for the word “Madonna” with respect to entertainment services and related goods. She has used her name and the mark “Madonna” professionally for entertainment services since 1979. THE DOMAIN NAME ‘MADONNA.COM’ In May 1998, Don Parisi, who was in the business of developing Web sites, purchased the domain name “Madonna.com” through his business Whitehouse.com from Pro Domains for $20,000. The next month he registered the word “Madonna” as a trademark in Tunisia. At that time, Madonna.com began operating as an adult entertainment portal Web site. The Web site featured sexually explicit photographs and text, and it contained a notice that the site was not affiliated with Madonna the entertainer, the Catholic Church or other “Madonna”-named entities. At the end of May 1999, Madonna.com ceased having sexual content on the site. MADONNA’S LAWSUIT In June 1999, Madonna and her attorneys objected to the use of the “Madonna.com” domain name. Parisi and his attorneys responded that the Web site had been shut down and he was in the process of donating the domain name to the Madonna Rehabilitation Hospital. Unable to resolve the matter, the entertainer’s lawyers initiated an action with the WIPO to transfer the domain name to her. Madonna complained that the domain name was identical to her trademark and that Parisi had no legitimate right to the domain name. She alleged that Parisi obtained the domain name to attract Internet users to a pornographic Web site, and that he obtained commercial gain based on confusion with her trademark. THE DEFENSE Parisi defended the action by stating he had a bona fide business purpose for using the domain name, that he held a Tunisian trademark for the word “Madonna,” and that he had attempted to make a legitimate noncommercial use of the name by donating it to the hospital. He also contended he did not register the domain name in bad faith for the following reasons: his primary motivation was not to sell the domain name; the domain name was not registered to prevent the entertainer from using her mark as a domain name; he was not engaged in a pattern of registering domain names to prevent others from doing so (despite having registered “wallstreetjournal.com”); the disclaimer on the Web site would eliminate any possible confusion; and the use of a commonly known word such as “Madonna” to attract business did not violate the law. WIPO’S DECISION A three-member WIPO panel issued a decision that sided with the entertainer and ordered the transfer of the domain name “Madonna.com” to her. The panel found Parisi did not have a legitimate interest in the domain name and instead used it “with the intent to attract commercial gain [and] Internet users … by trading on the fame of [the entertainer's] mark.” The panel gave no value to the domain holder’s registered trademark in Tunisia, especially because such a mark is issued “without any substantive examination.” The panel was not sympathetic to the argument that the domain name was about to be transferred to the Madonna Rehabilitation Hospital. The panel found the negotiations were too far from completion and was concerned that the transfer was precipitated by the entertainer’s efforts to obtain the domain name. With regard to Parisi’s alleged attempts to attract Internet users to a Web site for commercial gain by causing confusion with Madonna’s trademark, the panel again found in favor of the entertainer. The panel found it noteworthy that the domain holder did not have an explanation as to why “Madonna.com” was worth purchasing for $20,000 in the first place and why that name was valuable to attract people to a sexually explicit website. The panel did observe that the entertainer has appeared in Penthouse magazine and published a book titled “Sex.” The panel also noted that Parisi was not able to tie his website to any dictionary definition of the word “Madonna.” The panel also found that the disclaimer on the Web site was insufficient to avoid a finding of bad faith because the disclaimer could be “ignored or misunderstood by Internet users.” Even though the entertainer has created sexually explicit content, the panel disagreed with the notion that the domain holder’s formerly sexually explicit site could not tarnish the entertainer’s reputation. The panel found that her reputation could be tarnished because the Web site contained sexually explicit content beyond Madonna’s control and possible standards of quality. INCONSISTENT RESULTS? This decision appears somewhat inconsistent with a recent WIPO decision regarding the domain name “Sting.com.” In that case, British pop star Sting was unsuccessful in obtaining the transfer of “Sting.com.” The WIPO panel denied his request because the word “sting” is “a common English word.” DEFEAT ACKNOWLEDGED Soon after the WIPO decision, the Madonna.com Web site acknowledged the loss to Madonna Ciccone. It complained that one of the WIPO panelists was a private attorney opposed to Parisi in another domain name dispute. The Web site went on to note: “There are thousands of individuals throughout the world who have ‘Madonna’ as a first or last name, thousands of businesses worldwide use the name ‘Madonna’ as their business name and there are 275 worldwide trademarks using the word ‘Madonna,’ including 75 federal and state trademarks in the United States alone.” The site also stated, “There are 87 active websites using ‘madonna’ in their Web addresses, including madonna.net and madonna.org.” The site commented that Madonna Ciccone “was named after the Virgin Mary as was her mother and hundreds of thousands of other people throughout the world over the past 2000 years.” The site concluded, “We do not believe that because Ms. Ciccone named her act after the Virgin Mary that gives her the right to stop any other party from using the word ‘madonna’ as a title of their website.” Food for thought . . . . Eric J. Sinrod is a partner in the San Francisco office of Duane Morris LLP, where he focuses on technology and litigation matters. His Web site is sinrodlaw.com and his firm’s site is Duane Morris.

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