Madonna v. Parisi

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In 1998 businessman Dan Parisi registered the domain name “Madonna.com”. Parisi was somewhat well known in the domain name world as the registrant of “whitehouse.com” and “wallstreetjournal.com” among other domain names. Parsi claimed that he purchased Madonna.com through his business Whitehouse.com, Inc., for $20,000. In 1999 Madonna the famous singer and entertainer filed a UDRP complaint to have the domain name transferred to her. 

At the outset of the case Madonna showed that she had both federal trademark rights, as well as common law trademark rights to the word “Madonna.” With this being established, the panel quickly found the element of similarity of the disputed domain name and the trademark to be satisfied. Briefly after purchasing the domain name, Parisi registered "Madonna" as a trademark in the country of Tunisia. When questioned on the motivation behind the registration Parisi admitted that he only secured the trademark registration to protect his registration of the domain name. The panel found that under the circumstances, despite Parisi's trademark registration in Tunisia there was still a likelihood that his use of "madonna.com" could constitute trademark infringement against Madonna the entertainer.

The panel proceeded to find that Parisi also did not have any kind of legitimate interest in “Madonna.com” and with the evidence presented he appeared to have registered the website in an attempt to profit off of the good will and fame of Madonna. On October 12, 2000 the panel ruled that the domain name should be transferred to the singer Madonna, who still uses the domain name to this day.