Gotta love the music of the 80’s.
Madonna‘s 1984 album “Like a Virgin” spawned several hits, including “Material Girl.”
In a strange UDRP involving MG Icon LLC, a company in a “joint venture” with Madonna, the domain MaterialGirl.com was challenged at the National Arbitration Forum.
Registered in 1998, MaterialGirl.com was listed for sale on Afternic for $75,000 dollars.
Material girl image results from Google are overwhelmingly related to Madonna.
According to the Complainant, in 2010, it launched the Material Girl brand. That brand, which was created along with Madonna’s daughter, Lourdes, targets girls and young women between the ages of 16 and 24, and emphasizes the association between Madonna and the Material Girl mark as a 1980s-inspired clothing line.
The Complainant operates from the domain MaterialGirlCollection.com.
“Complainant states that it has rights in the MATERIAL GIRL mark through its registrations with the United States Patent and Trademark Office and the Office for Harmonization in the Internal Market in, respectively, 2010 and 2005. The registrations were filed in, respectively, 2005 and 2004. The European registration is for clothing, jewelry, and other categories; the US registration is for personal care products (shampoos, etc.) and for nutritional health supplements. Complainant has registered other marks subsequently, including in the US in 2010 for clothing. Complainant also has common law rights in the mark dating back to 1984. The disputed domain name was first registered in 1998; it was registered by the Respondent in 2008. According to Complainant, the disputed domain name is identical to its mark. Complainant cites UDRP precedents to support its position.”
The Respondent had the tough task to fight back on a strong trademark; after all, the parked domain displayed ads related to fashion, clothing and related accessories.
“Respondent does not contest that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent alleges, however, that any alleged rights that third party Madonna may have in the “material girl” term are irrelevant to this Proceeding and, even if any alleged rights were relevant, Complainant has not submitted any documentation that evidences that Madonna ever used the “material girl” term as a trademark and acquired common law or unregistered trademark rights as a result of her alleged use thereof. Further, even if Madonna were to have such common law rights, there is no evidence provided that such rights have been assigned to Complainant.”
A three member panel cut the Respondent no slack. There are at least 135 other domains starting with “MaterialGirl” and several are active businesses related to fashion.
The panelists chastised the fact that in claiming rights to the domain, the Respondent presented contradictory evidence of the alleged generic nature of the terms, and utilized privacy WHOIS:
“Furthermore, Respondent could not have gained any rights by simply registering the domain name. The domain name was registered using a privacy service. Respondent did nothing to publicly associate itself with the domain name.”
Considering how the “Material Girl” song is more than 30 years old, the Respondent faced a very tough panel, which decided that the domain should be transferred to the Complainant.
For the full text of the UDRP decision for MaterialGirl.com click here.
