Mattel, Inc. v. Barbiechannel
Claim Number: FA0201000103870
Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan. Respondent is Barbiechannel, Ulsan, South Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbiechannel.com>, registered with Gabia, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 15, 2002; the Forum received a hard copy of the Complaint on January 18, 2002. The Complaint was submitted in both Korean and English.
On January 16, 2002, Gabia, Inc. confirmed by e-mail to the Forum that the domain name <barbiechannel.com> is registered with Gabia Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 January 25, 2002, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 14, 2002 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, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The disputed domain name <barbiechannel.com> is confusingly similar to the BARBIE mark, in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant holds multiple registrations of the BARBIE trademark, registered on the Principal Register of the United States Patent and Trademark Office, dating back as early as March 20, 1962.
Complainant has used its BARBIE mark continuously in commerce since September 1960, in association with various children’s products such as the BARBIE doll and accessories, a teen magazine, wrist watches, autograph books and diaries, eating utensils and tea sets, Halloween costumes, toiletries, toy vehicles, clothing, jewelry, cosmetics, and purses.
Complainant currently hosts information related to its BARBIE products online at various domain names incorporating the BARBIE mark, including <barbie.com>, <barbiecollectibles.com>, and <barbiecollectiblesstore.com>, among others.
Respondent registered the disputed domain name on July 23, 2001 and has used it to display a picture of Complainant’s BARBIE doll product and to direct users to an online toy store.
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 the 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.
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; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office and subsequent continuous use. It is insignificant under Policy ¶ 4(a)(i) that Complainant has not provided evidence of trademark registration in Korea, Respondent’s country of residence, as the Policy only requires Complainant to demonstrate its rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the Complaint in the first place).
The disputed domain name is confusingly similar to Complainant’s BARBIE mark. The addition of the word “channel” to the mark does not significantly alter the meaning of the mark so as to defeat a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contained the identical mark of the Complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name to be confusingly similar to Complainant’s BROADCOM mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in the BARBIE mark. Because Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s use of the infringing domain name in order to direct Internet users to an unaffiliated commercial website cannot be deemed a bona fide use of the domain name pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent had an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Further, although Respondent listed “barbiechannel” as the registrant of the disputed domain name, it has provided no evidence that it is actually commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”) (emphasis added).
The Panel thus finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used a domain name that incorporated Complainant’s entire BARBIE mark in order to confuse Internet users and divert them to its own commercial website. Such use demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contained information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, because a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).
Further, because of the wide notoriety of the BARBIE mark and Respondent’s apparent awareness of Complainant’s BARBIE products and marks, Respondent’s registration and use of <barbiechannel.com> suggests an opportunistic attempt to trade on the valuable goodwill and fame Complainant has achieved in its marks. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Accordingly, 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 the requested relief should be hereby granted.
Accordingly, it is Ordered that the <barbiechannel.com> domain name be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 25, 2002
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