August 21, 2000 02:00pm
Madonna.com Embroiled in Domain Ownership Spat
Source: CNET News.com
by: Rachel Konrad and Evan Hansen
A pornographer who has registered hundreds of domain names could lose one of the biggest gems in his collection: Madonna.com.
Dan Parisi, who operates adult entertainment site Whitehouse.com out of his office in a suburban strip mall in Parsippany, N.J., purchased Madonna.com in 1998 for $20,000 from a bulk domain name registrar. The 40-year-old former asbestos remover ran Madonna.com as an adult Web site until the spring of 1999, when he pulled the site.
Madonna, who runs her own site at madonnafanclub.com, has filed a complaint with the World Intellectual Property Organization (WIPO) to reclaim Madonna.com. Madonna's lawyers said Parisi's site represents little more than an "unauthorized, bad faith registration" of her name and trademark.
Under the Uniform Dispute Resolution Policy adopted by the Internet Corp. for Assigned Names and Numbers, trademark owners can only take away names that someone is using "in bad faith." A sign of bad faith is registering a name "primarily for the purpose of selling" it to a trademark holder.
G. Gervaise Davis III, an attorney for Monterey, Calif.-based Davis & Schroeder and a domain name dispute arbitrator not involved in the case, said Madonna is likely to prevail in the dispute. Although the word "Madonna" is a relatively common first name and is widely used in religious circles to refer to the Virgin Mary, Davis said the 1980s pop icon seems to have a more legitimate right to Madonna.com than Parisi.
"Quite clearly, if someone put up a site that was religious, there would be no question of confusion," Davis said. "But when someone puts up a site that is pornographic or disparaging in some way... that would trigger provisions of trademark law allowing (Madonna) to get the name back."
Parisi recently spent about $100,000 to register the domain names of TWAsucks, Ciscosucks, GMsucks and more than 500 of the world's largest corporations under the moniker "thiscompanysucks.com." He vowed to continue his fight for Madonna.com.
"The bigger issue with this case is that people should have the right to keep domain names that are in the dictionary," Parisi told CNET News.com today. "We did not register the name in bad faith. We used it (for a commercial Web site). We never tried to sell it."
Parisi's struggle to maintain Madonna.com isn't unique. A new coalition says legitimate mom-and-pop e-businesses are losing their domain names to larger companies at an alarming rate.
Formed by the Association for Domain Owners' Rights, the Top-Level Domain Lobby and KeepYourDomain.com, the coalition found that the WIPO awarded plaintiffs 84 percent of the names they sought in the first half of 2000.
Madonna.com now carries an anthem to the rights of individual Web publishers vs. corporate interests. A statement posted on the site argues that the singer Madonna Louise Ciccone has no rights to her namesake site.
"She was named after the Virgin Mary as was her mother and hundreds of thousands of other people throughout the world over the past 2,000 years," the site states. "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 Web site."
According to Madonna.com, 275 worldwide trademarks incorporate the word "Madonna," including 75 federal and state trademarks in the United States and Canada alone. There are 87 active Web sites using "madonna" in their Web addresses, including the Madonna Rehabilitation Hospital's site at madonna.org.
But Davis disagreed, implying that Ciccone's rights to her name trump individual site owners.
"Respondents often win when cases deal with generic terms. But in this case, the personality is so famous that it takes it out of the generic," Davis said. "Trademark holders don't own words, but they do own the identifications associated with words."
Madonna.com is the most recent in a string of high-profile domain name disputes. In May, WIPO ordered the operator of a parody site about Julia Roberts to surrender Juliaroberts.com to the movie star, one of the highest paid women in Hollywood.
But Gordon Sumner, the former Police bassist known as Sting, recently lost his bid to win the rights to Sting.com in an arbitration, which noted that he had not trademarked the name.
"Although it is accepted that the Complainant is world famous under the name Sting, it does not follow that he has rights in Sting as a trademark or service mark," the panel wrote in its June 20 decision.
For the irrefutable queen of 1980s pop, Madonna.com isn't likely to end the singer's cybersquatting scuffles.
Likeavirgin.com, named after one of the singer's biggest hits, is operated by domain name registrar Verio. Luckystar.com is owned by ComBuys.com Domain Names. Laislabonita.com is for sale by registration site GoldNames.
And what about Madonna's most famed song--the one that is used interchangeably with her own? Materialgirl.com is a site that hawks items ranging from watches to laptop computers, as well as online casinos and information about hobbies such as skiing and rock climbing.
Maybe the Material Girl will take heart in the fact that some of more turgidly worded hits have not yet been squatted: Lovedontlivehereanymore.com and Dressyouupinmylove.com are still unregistered.
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