## Facts

- Madonna Ciccone, professionally known as Madonna, owned U.S. trademark registrations for the mark MADONNA for entertainment-related services and goods and had used the mark since 1979.
- Dan Parisi and/or an affiliated entity controlled the registration for the domain name madonna.com.
- In May 1998, Respondent purchased the madonna.com registration for $20,000.
- Respondent registered “MADONNA” as a trademark in Tunisia in June 1998.
- Shortly after acquiring the domain, Respondent operated an adult-oriented portal at madonna.com containing sexually explicit content and a disclaimer stating the site was not affiliated with various entities, including “Madonna the singer.”
- By March 1999, the explicit content was removed; by May 1999, the site largely displayed a disclaimer and a “Coming soon Madonna Gaming and Sportsbook” message.
- Madonna initiated an administrative proceeding under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) seeking transfer of the domain name.

## Issues

1. Whether madonna.com is identical or confusingly similar to a trademark or service mark in which Complainant has rights under UDRP ¶ 4(a)(i).
2. Whether Respondent has rights or legitimate interests in madonna.com under UDRP ¶ 4(a)(ii).
3. Whether madonna.com was registered and is being used in bad faith under UDRP ¶ 4(a)(iii).

## Decision

- The panel found madonna.com identical to Complainant’s MADONNA mark and held UDRP ¶ 4(a)(i) satisfied.
- The panel found Respondent lacked rights or legitimate interests because Respondent was not commonly known by the name and did not make a bona fide offering of goods or services that justified the registration; UDRP ¶ 4(a)(ii) was satisfied.
- The panel found bad-faith registration and use, concluding Respondent targeted the fame of Complainant’s mark to attract users for commercial gain; UDRP ¶ 4(a)(iii) was satisfied.
- The panel ordered transfer of madonna.com to Complainant.

## Legal Principles

- A domain name that exactly matches a complainant’s distinctive and famous mark satisfies UDRP ¶ 4(a)(i), even if the term has dictionary or religious meanings.
- Legitimate interests under UDRP ¶ 4(a)(ii) generally require evidence such as being commonly known by the domain name or demonstrable bona fide use independent of the complainant’s mark; adopting the name to capitalize on a famous mark is not legitimate.
- Bad faith under UDRP ¶ 4(a)(iii) is supported where a respondent uses a famous mark to attract internet users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement (UDRP ¶ 4(b)(iv)).
- A website disclaimer typically does not cure confusion created by the domain name itself and does not, by itself, negate bad faith.
- Changing or removing objectionable content after acquisition does not preclude a bad-faith finding where the overall conduct shows continued intent to profit from traffic associated with the famous mark.

## Conclusion

Applying the UDRP’s three-part test, the panel concluded that Respondent registered and used madonna.com to trade on the fame of Madonna’s MADONNA mark, lacked any legitimate interest in the name, and acted in bad faith; the domain name was ordered transferred to Madonna.


Madonna Ciccone (p/k/a Madonna) v. Parisi, WIPO Case No. D2000-0847 (Oct. 12, 2000)