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.”
