madonna.com

WIPO Arbitration and Mediation Center

The Complainant is Madonna Ciccone, an individual professionally known as Madonna.

The Respondent is "Madonna.com," the registrant for the disputed domain name, located in New York, New York, U.S.A. or Dan Parisi, the listed contact for the domain name.

The disputed domain name is madonna.com.

The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The Complaint was received by the WIPO Arbitration and Mediation Center on July 21, 2000 (e-mail) and on July 24, 2000 (hardcopy). The Response was received on August 23, 2000 (e-mail) and on August 28, 2000 (hardcopy). Both parties are represented by Counsel. There have been no further submissions on the merits.

Respondent elected to have the case decided by a three-member panel. David E. Sorkin was appointed as the Respondent’s nominee. James W. Dabney was selected as the Complainant’s nominee. Mark V.B. Partridge was appointed as presiding panelist.

It appears that all requirements of the Policy and the Rules have been satisfied by the parties, WIPO and the Panelists.

Complainant is the well-known entertainer Madonna. She is the owner of U.S. Trademark Registrations for the mark MADONNA for entertainment services and related goods (Reg. No. 1,473,554 and 1,463,601). She has used her name and mark MADONNA professionally for entertainment services since 1979. Complainant’s music and other entertainment endeavors have often been controversial for featuring explicit sexual content. In addition, nude photographs of Madonna have appeared in Penthouse magazine, and Complainant has published a coffee-table book entitled "Sex" featuring sexually explicit photographs and text.

Respondent is in the business of developing web sites. On or about May 29, 1998, Respondent, through its business Whitehouse.com, Inc., purchased the registration for the disputed domain name from Pro Domains for $20,000. On June 4, 1998, Respondent registered MADONNA as a trademark in Tunisia. On or about June 8, 1998, Respondent began operating an "adult entertainment portal web site." The web site featured sexually explicit photographs and text, and contained a notice stating "Madonna.com is not affiliated or endorsed by the Catholic Church, Madonna College, Madonna Hospital or Madonna the singer." By March 4, 1999, it appears that Respondent removed the explicit sexual content from the web site. By May 31, 1999, it appears that the site merely contained the above notice, the disputed domain name and the statement "Coming soon Madonna Gaming and Sportsbook."

On June 9, 1999, Complainant, through her attorneys, objected to Respondent’s use of the Madonna.com domain name. On June 14, 1999, Respondent through its counsel stated: "As I assume you also know, Mr. Parisi’s website [sic] was effectively shut down before you sent your letter, and is now shut down altogether. He is in the process of donating his registration for the domain name."

The word "Madonna," which has the current dictionary definition as the Virgin Mary or an artistic depiction of the Virgin Mary, is used by others as a trademark, trade name and personal name. After Respondent’s receipt of Complainant’s objection, it appears that Respondent had communication with Madonna Rehabilitation Hospital regarding the transfer of the domain name to the Hospital. It further appears that Respondent has not identified all of its communications on this matter. Nevertheless, the transfer had not taken place at the time this proceeding was commenced.

By his own admission, Respondent has registered a large number of other domain names, including names that matched the trademarks of others. Other domain names registered by Respondent include <wallstreetjournal.com> and <edgaronline.com>. See Response, Exhibit A, ś30, 35.

A. Complainant

Complaint contends that the disputed domain name is identical to the registered and common law trademark MADONNA in which she owns rights. She further contends that Respondent has no legitimate interest or rights in the domain name. Finally, Complainant contends that Respondent obtained and used the disputed domain name with the intent to attract Internet users to a pornographic web site for commercial gain based on confusion with Complainant’s name and mark.

B. Respondent

Respondent does not dispute that the disputed domain name is identical or confusingly similar to Complainant’s trademark. Respondent, however, claims that Complainant cannot show a lack of legitimate interest in the domain name because Respondent (a) made demonstrable preparation to use the domain name for a bona fide business purpose; (b) holds a bona fide trademark in the word MADONNA; and (c) has attempted to make bona fide noncommercial use of the name by donating it to the Madonna Rehabilitation Hospital.

Respondent also contends that it has not registered and used the domain name in bad faith because (a) there is no evidence that its primary motivation was to sell the disputed domain name; (b) the domain name was not registered with an intent to prevent Complainant from using her mark as a domain name; (c) respondent is not engaged in a pattern of registering domain names to prevent others from doing so; (d) the use of a disclaimer on the web site precludes a finding that Respondent intentional seeks to attract users for commercial gain based on confusion with Complainant’s mark; and (e) the use of a generic term to attract business is not bad faith as a matter of law. Finally, Respondent claims that Complainant cannot legitimately claim tarnishment because she has already associated herself with sexually explicit creative work.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

(ii) that the respondent has no legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and used in bad faith.

A threshold question in proceedings under the Policy is to identify the proper standard for reaching a decision on each of these issues. The limited submissions allowed under the Policy makes these proceedings somewhat akin to a summary judgment motion under the United States Federal Rules of Civil Procedure. On a summary judgment motion, the movant has the burden of showing that there are no disputes of material facts. All doubts are to be resolved in favor of the non-moving party. If there are material disputes of fact, the motion must be denied and the case will advance to a hearing before a trier of fact, either judge or jury.

Although the nature of the record is similar to that found on a summary judgment motion, our role is different than that of the Court on a summary judgment motion. Paragraph 15 of the Rules states that the "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy. . ." Paragraph 10 of the Rules provides that the "Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Paragraph 4 of the Policy makes repeated reference to the Panel’s role in making findings of fact based on the evidence.

Based on the Policy and the Rules, we disagree with the view that disputes over material facts should not be decided in these proceedings. Rather, it is clear to us that our role is to make findings of fact as best we can based on the evidence presented provided the matters at issue are within the scope of the Policy. There may be circumstances due to the inherent limitations of the dispute resolution process or for other reasons where it would be appropriate for a panel to decline to decide a factual dispute. However, the mere existence of a genuine dispute of material fact should not preclude a panel from weighing the evidence before it and reaching a decision.

Since these proceedings are civil, rather than criminal, in nature, we believe the appropriate standard for fact finding is the civil standard of a preponderance of the evidence (and not the higher standard of "clear and convincing evidence" or "evidence beyond a reasonable doubt"). Under the "preponderance of the evidence" standard a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. We recognize that other standards may be employed in other jurisdictions. However, the standard of proof employed in the United States seems appropriate for these proceedings generally, and in particular for this proceeding which involves citizens of the United States, actions occurring in the United States and a domain name registered in the United States.

In this case, there are factual disputes over Respondent’s intent in obtaining and using the disputed domain name. For the reasons just stated, these disputes do not preclude a decision. Instead, we reach a decision based on the preponderance of the evidence submitted by the parties on the basic issues under the Policy.

As noted above, Respondent does not dispute that its domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Accordingly, we find that Complainant has satisfied the requirements of Paragraph 4(c)(i) of the Policy.

Complainant has presented evidence tending to show that Respondent lacks any rights or legitimate interest in the domain name. Respondent’s claim of rights or legitimate interests is not persuasive.

First, Respondent contends that its use of the domain name for an adult entertainment web site involved prior use of the domain name in connection with a bona fide offering of goods or services. The record supports Respondent’s claim that it used the domain name in connection with commercial services prior to notice of the dispute. However, Respondent has failed to provide a reasonable explanation for the selection of Madonna as a domain name. Although the word "Madonna" has an ordinary dictionary meaning not associated with Complainant, nothing in the record supports a conclusion that Respondent adopted and used the term "Madonna" in good faith based on its ordinary dictionary meaning. We find instead that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s mark. We see no other plausible explanation for Respondent’s conduct and conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.

Second, Respondent contends that it has rights in the domain name because it registered MADONNA as a trademark in Tunisia prior to notice of this dispute. Certainly, it is possible for a Respondent to rely on a valid trademark registration to show prior rights under the Policy. However, it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. 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.

Here, Respondent admits that the Tunisia registration was obtained merely to protect his interests in the domain name. Respondent is not located in Tunisia and the registration was not obtained for the purpose of making bona fide use of the mark in commerce in Tunisia. A Tunisian trademark registration is issued upon application without any substantive examination. Although recognized by certain treaties, registration in Tunisia does not prevent a finding of infringement in jurisdictions outside Tunisia. Under the circumstances, some might view Respondent’s Tunisian registration itself as evidence of bad faith because it appears to be a pretense to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case.

Third, Respondent claims that its offer to transfer the domain name to the Madonna Hospital in Lincoln, Nebraska, is a legitimate noncommercial use under Paragraph 4(c)(iii) of the Policy. We disagree. The record is incomplete on these negotiations. Respondent has failed to disclose the specifics of its proposed arrangement with Madonna Hospital. Complainant asserts that the terms of the transfer include a condition that Madonna Hospital not transfer the domain name registration to Complainant. It also appears that the negotiations started after Complainant objected to Respondent’s registration and use of the domain name. These circumstances do not demonstrate a legitimate interest or right in the domain name, and instead suggest that Respondent lacks any real interest in the domain name apart from its association with Complainant. Further, we do not believe these circumstances satisfy the provisions of Paragraph 4(c)(iii), which applies to situations where the Respondent is actually making noncommercial or fair use of the domain name. That certainly was not the situation at the time this dispute arose and is not the situation now.

Respondent cites examples of other parties besides Complainant who also have rights in the mark MADONNA, but that does not aid its cause. 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.

Based on the record before us, we find that Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.

Under Paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use of a domain name includes the following circumstances:

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The pleadings in this case are consistent with Respondent's having adopted <madonna.com> for the specific purpose of trading off the name and reputation of the Complainant, and Respondent has offered no alternative explanation for his adoption of the name despite his otherwise detailed and complete submissions. Respondent has not explained why <madonna.com> was worth $20,000 to him or why that name was thought to be valuable as an attraction for a sexually explicit web site. Respondent notes that the complainant, identifying herself as Madonna, has appeared in Penthouse and has published a "Sex" book. The statement that "madonna" is a word in the English language, by itself, is no more of a defense than would be the similar statement made in reference to the word "coke". Respondent has not even attempted to tie in his web site to any dictionary definition of madonna. The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain. That purpose is a violation of the Policy, as well as U.S. Trademark Law.

Respondent’s use of a disclaimer on its web site is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9^th Cir. 1999).

The Policy requires a showing of bad faith registration and use. Here, although Respondent was not the original registrant, the record shows he acquired the registration in bad faith. The result is the equivalent of registration and is sufficient to fall within the Policy. Indeed, Paragraph 4(b)(i) of the Policy treats acquisition as the same as registration for the purposes of supporting a finding of bad faith registration. We therefore conclude that bad faith acquisition satisfies the requirement of bad faith registration under the Policy.

Respondent’s reliance on a previous ICANN decision involving the domain name <sting.com> is misplaced. See Gordon Sumner p/k/a/ Sting v. Michael Urvan, Case No. 2000-0596 (WIPO July 24, 2000). In the Sting decision there was evidence that the Respondent had made bona fide use of the name Sting prior to obtaining the domain name registration and there was no indication that he was seeking to trade on the good will of the well-known singer. Here, there is no similar evidence of prior use by Respondent and the evidence demonstrates a deliberate intent to trade on the good will of complainant. Where no plausible explanation has been provided for adopting a domain name that corresponds to the name of a famous entertainer, other Panels have found a violation of the Policy. See Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO May 29, 2000); Helen Folsade Adu p/k/a Sade v. Quantum Computer Services Inc., Case No. D2000-0794 (WIPO September 26, 2000).

There is also evidence in the record which tends to support Complainant’s claim that Respondent’s registration of the domain name prevents Complainant from reflecting her mark in the corresponding .com domain name and that Respondent has engaged in a pattern of such conduct. It is admitted that Respondent registers a large number of domain names and that some happen to correspond to the names or marks of others. We find, however, that the record is inconclusive on this basis for finding bad faith and do not rely on this evidence for our conclusion.

Respondent asserts that we should reject Complainant’s claims because she has been disingenuous in claiming that her reputation could be tarnished by Respondent’s actions. Respondent suggests that her reputation cannot be tarnished because she has already associated herself with sexually explicit creative work. That argument misses the point. Even though Complainant has produced sexually explicit content of her own, Respondent’s actions may nevertheless tarnish her reputation because they resulted in association with sexually explicit content which Complainant did not control and which may be contrary to her creative intent and standards of quality. In any event, we do not rely on tarnishment as a basis for our decision.

Because the evidence shows a deliberate attempt by Respondent to trade on Complainant’s fame for commercial purposes, we find that Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy.

Under Paragraph 4(i) of the Policy, we find in favor of the Complainant. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; Respondent lacks rights or legitimate interests in the domain name; and the domain name has been registered and used in bad faith. Therefore, we decide that the disputed domain name <madonna.com> should be transferred to the Complainant.

Mark V.B. Partridge
Presiding Panelist

James W. Dabney
Panelist

David E. Sorkin
Panelist

October 12, 2000