What the panel decided
On 12 October 2000, the three-member panel in WIPO case D2000-0847 ordered the transfer of madonna.com to the singer. It found trademark rights, no rights or legitimate interests on the registrant’s part, and registration and use in bad faith.
The decision considered the domain’s use for an adult website and found an intention to exploit the singer’s reputation. It examined specific evidence rather than simply matching two names.
A disclaimer does not settle everything
The website included a disclaimer saying it was not affiliated with the singer. That did not prevent the transfer order. A sentence on a page does not necessarily outweigh the rest of the evidence.
It would be equally misleading to infer that everyone else is prohibited from using the word “Madonna” in any context. The decision concerns this domain, these rights and these circumstances.
For a business choosing its name
Domain availability is a technical check. Before investing in a name, also examine existing rights and the possibility of confusion with an established activity.
If you suspect infringement of your own trademark, keep useful evidence, including dates, screenshots and correspondence. Have the situation assessed before sending a formal demand or paying to buy the name. A procedure applicable to a .com should not automatically be assumed to apply to a .lu.
The Sting case, also covered in Insights, shows how another celebrity and another set of facts can produce a different outcome.
Put it into practice
Explore the related Wize guideSources
A correction to suggest? info@wize.lu