Mattel, Inc. v. Sabir Jihad
Claim Number: FA0706001024388
Complainant is Mattel, Inc. (“Complainant”), represented by Megan
L. Martin, of Dunnegan LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exzoticbarbie.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <exzoticbarbie.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <exzoticbarbie.com> domain name.
3. Respondent registered and used the <exzoticbarbie.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., manufactures and sells various dolls, toys, clothes, and accessories. Complainant uses its BARBIE mark in connection with the sale of dolls and toys. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 728,811 issued March 20, 1962).
Respondent registered the <exzoticbarbie.com>
domain name on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The registration of the BARBIE mark with the USPTO by
Complainant sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <exzoticbarbie.com> is confusingly similar to
Complainant’s BARBIE mark, in that it merely adds the term “exzotic” onto the
mark. Furthermore, the addition of the
generic top-level domain “.com” to the mark does not eliminate the confusing similarity,
as all domain names require the use of a top-level domain. Therefore, the Panel finds that the <exzoticbarbie.com>
domain name is confusingly similar to Complainant’s BARBIE mark pursuant to
Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138
(WIPO Apr. 19, 2000) (finding that because the domain name
<quixtar-sign-up.com> incorporates in its entirety the complainant’s
distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving Respondent lacks rights or legitimate interests in the <exzoticbarbie.com> domain name. After Complainant establishes a prima facie case, the burden shifts to Respondent to prove that it does in fact have rights or a legitimate interest in the disputed domain name. In this case, the Panel finds that Complainant has established a prima facie case pursuant to the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The fact that Respondent has failed to answer the Complaint raises the presumption that Respondent lacks rights and legitimate interests in the <exzoticbarbie.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Respondent’s WHOIS information does not indicate, and there
is nothing in the record that suggests, that Respondent is commonly known by
the <exzoticbarbie.com> domain name. At the time of the filing of the Complaint,
the disputed domain name was registered to Sabir Jihad. There is also no evidence to suggest that
Respondent is authorized to use Complainant’s BARBIE mark. Therefore, the Panel finds that Respondent
lacks rights or legitimate interests in the disputed domain name under Policy ¶
4(c)(ii). See Am. W. Airlines, Inc. v.
Paik, FA 206396 (Nat. Arb. Forum
Respondent’s <exzoticbarbie.com> domain name resolves to a
website containing adult-oriented content.
Because of this, the Panel finds that the use of the disputed domain
name does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Dipaolo v. Genero, FA
203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to pornography is not a bona
fide offering of goods or services or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”); see also Nat’l Football League Props., Inc. v. One Sex Entm’t Co.,
The record indicates that via e-mail, Respondent attempted to transfer the <exzoticbarbie.com> domain name to Complainant for a negotiated price. Previous panels have held, and this panel finds, that an offer to sell indicates a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <exzoticbarbie.com> domain name to lure Internet users to an adult-oriented website, presumably for commercial gain. Respondent is taking advantage of the likelihood that users will confuse the disputed domain name as being affiliated with Complainant and its BARBIE mark, indicating that Respondent registered and is using the <exzoticbarbie.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel 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 <exzoticbarbie.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 6, 2007
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