Claim Number: FA0706001024381
Complainant is Mattel, Inc. (“Complainant”), represented by Megan
L. Martin, of Dunnegan LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lennybarbie.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2007.
On June 29, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lennybarbie.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on July 23, 2007.
On July 30, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. Complainant, Mattel, Inc., owns federal trademark registrations for BARBIE. Complainant further contends that Respondent’s <lennybarbie.com> domain name is confusingly similar to Complainant’s Mark.
2. Complainant contends that Respondent does not have any rights or legitimate interests in the <lennybarbie.com> domain name.
3. Complainant contends that Respondent registered and used the <lennybarbie.com> domain name in bad faith.
Respondent contends that
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Respondent asserts, in additional correspondence
to the National Arbitration Forum, that Complainant may not rely on its
However, the Policy is not confined to
traditional geographic boundaries and a complainant may rely on trademark
rights in a country other than respondent’s residence. See
Renaissance Hotel Holdings, Inc. v.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant alleges rights in the BARBIE mark through its registration of the mark with the USPTO. The Panel finds that Complainant’s timely registration and extensive use of the BARBIE mark over many years establishes its rights in the mark pursuant to Policy ¶ 4(a). See Torey Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (“The Panel finds that Complainant has established rights in the Trademark, by reason of its U.S. trademark registrations, which are valid and subsisting. The U.S. Trademark Act is clear that the Certificate of Registration, as here, is prima facie evidence of the validity of the registered mark and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods specified in the registration.”)
The disputed domain name fully incorporates
the BARBIE mark and adds the term “lenny” before it. Whether the resulting domain is confusingly
similar to the BARBIE mark is a close call because the added word “lenny” does
not have any apparent descriptive meaning in this context. Nevertheless, Respondent does not argue that
this domain is not confusingly similar to the BARBIE mark and merely (and unconvincingly)
argues that the BARBIE mark is generic.
However, Policy ¶ 4(a)(i) does not delve into the underlying generic or
non-generic nature of a disputed domain name.
See Skyhawk Techs., LLC v.
As Respondent has not provided any substantive arguments pertaining to the rights or legitimate interests prong of this analysis, Respondent has essentially defaulted on this issue. In view of this “default,” the Panel accepts all reasonable allegations and inferences set forth in the Complaint regarding the confusing similarity issue as true.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent is not commonly known by the <lennybarbie.com> domain name. The WHOIS registration information lists the registrant as “Aaron Jacques,” and Complainant asserts that Respondent has not acquired any trademark or service mark rights to the domain name in question. In light of the lack of countervailing evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts, and Respondent does not
dispute, that Respondent’s <lennybarbie.com>
domain name resolves to an adult-oriented website called “
The Panel therefore finds that ¶ 4(a)(ii) has been satisfied.
Respondent is using a domain name similar to Complainant’s BARBIE mark to direct Internet users to its adult-oriented web site and is therefore profiting from the goodwill associated with the BARBIE mark. Such use demonstrates registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic web sites evidenced bad faith use and registration of the domain name).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lennybarbie.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 29, 2007
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