Since the Madonna case, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO October. 12, 2000), there have been a number of instances in which the registrant of a disputed domain name has claimed trademark registration in its national jurisdiction. The Madonna principle holds that it “would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy.” The question framed in a subsequent case, BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004) is whether the registration of a trademark in a country foreign to the respondent’s residence was intended as a “device to bolster domain name registration.” The Madonna Respondent registered the trademark in Tunisia after the domain name. In BECA, the trademark, composed of dictionary words “medicine” and “assist” preceded the domain name. Other cases suggest that unless the complainant can prove that the trademark registration is tainted the respondent has right to the domain name. This is reinforced where the trademark and domain name are composed of dictionary words, but appropriating a famous stage name is in an altogether different category.
The Respondent in The Elizabeth Taylor Cosmetics Company v. Yong Huang, D2009-0919 (WIPO September 7, 2009), a Chinese national, registered a trademark in China for “ELIZAB TAYLOR” before registering <elizabtaylor.com>. The Panel dismissed the complaint because the registration followed the trademark. In doing so, she distinguished Madonna, but it can be argued that she misunderstood the Madonna principle. Elizabeth Taylor is distinguishable from BECA but not Madonna. It is not the sequence of events that determines the outcome, but whether in registering a confusingly similar trademark in a foreign jurisdiction the respondent's inferred purpose is to circumvent the Policy.
Judging from the website content in Elizabeth Taylor the Respondent clearly has the Complainant in mind. It should not be the validity of a rival trademark that matters but rights or legitimate interests with respect to a domain name confusingly similar to a preexisting trademark registered in another jurisdiction. However, the Panel took the view that she could not disregard the authority of a competent jurisdiction. This merely confuses the issue. If the Complainant’s contention was that the trademark was invalid then the matter would clearly be outside the scope of the Policy. But that was not the Complainant’s contention.
There are cases in which the complainant has operations in the same foreign jurisdiction as the respondent and its failure to oppose the trademark registration is elevated to a factor in ruling in the respondent’s favor. The Complainant in Elizabeth Taylor had previously challenged trademarks in China for ELIZABETH TAYLOR. In essence the Panel suggested that the Complainant do the same for ELIZAB TAYLOR. The final sentence of the decision reads, “However the Panel wishes to highlight that the present decision is issued without prejudice to any future re-filed Complaint by the Complainant under the Policy in light of any materially relevant subsequent developments, such as any lapse or successful trade mark challenge to Digasun’s Chinese trade mark registration 4409305.” This conclusion can only encourage foreign registrations of rival trademarks indistinguishable from preexisting trademarks, precisely what the Madonna principle was intended to prevent.
