Mattel, Inc. v. BUSINESS Center
Claim Number: FA0205000112630
Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan. Respondent is BUSINESS Center, HK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cajunbarbie.com> and <pornbarbie.com>, registered with CORE.
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 May 2, 2002; the Forum received a hard copy of the Complaint on May 6, 2002.
On May 6, 2002, CORE confirmed by e-mail to the Forum that the domain names <cajunbarbie.com>and <pornbarbie.com> are registered with CORE and that Respondent is the current registrant of the names. CORE has verified that Respondent is bound by the CORE 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 May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 firstname.lastname@example.org and 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 June 17, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Respondent’s <cajunbarbie.com> and <pornbarbie.com> domain names are confusingly similar to Complainant’s registered BARBIE mark.
2. Respondent has no rights or legitimate interests in the <cajunbarbie.com> and <pornbarbie.com> domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent did not submit a Response.
Complainant owns numerous trademark registrations containing its BARBIE trademark, including U.S. Trademark Reg. Nos. 689,055 issued December 1, 1959 and renewed December 1, 1979 and June 30, 2001; 728,811 issued March 20, 1962 and renewed on March 20, 1982; and 741,028 issued November 27, 1962 and renewed on November 29, 1982, among others.
Respondent registered the contested domain names on January 10, 2001. Respondent’s registered domain names, <cajunbarbie.com> and <pornbarbie.com>, link to pornographic web pages entitled “Cajun Barbie” and “NonstopHardcore,” respectively.
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.
Complainant has established its rights in the BARBIE mark through numerous registrations with the U.S. Patent and Trademark Office and subsequent continuous use.
Respondent’s <cajunbarbie.com> and <pornbarbie.com> domain names are confusingly similar to Complainant’s BARBIE mark. The addition of generic words fails to detract from the overall impression of the domain names, namely, the existence of Complainant’s BARBIE mark. 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 contains the identical mark of the Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or interests in respect of the disputed domain names. 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).
Given the popularity and notoriety of Complainant’s BARBIE mark, it seems unlikely that Respondent could have any rights or interests in domain names incorporating the word BARBIE. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). Furthermore, Complainant has extensively used its BARBIE mark since at least 1959. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent has used the disputed domain names to direct Internet users to pornographic websites. Respondent is taking advantage of the goodwill associated with Complainant’s mark and attempting to commercially benefit from diverted Internet traffic. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark.
Respondent is not commonly known by “cajunbarbie,” “pornbarbie,” <cajunbarbie.com> or <pornbarbie.com> pursuant to Policy ¶ 4(c)(ii). Respondent is only known to this Panel as Business Center. Respondent is not a licensee or authorized agent of Complainant. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinctive nature of Complainant’s BARBIE mark and Complainant’s listing on the Principal Register of the U.S. Patent and Trademark Office, Respondent is thought to have been on constructive notice as to the existence of Complainant’s mark. Respondent’s registration and use of the infringing <cajunbarbie.com> and <pornbarbie.com> domain names despite constructive knowledge of Complainant’s mark represents bad faith registration and use under Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also 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 constituted bad faith).
Respondent registered <cajunbarbie.com> and <pornbarbie.com>, domain names that incorporate Complainant’s BARBIE mark, in order to commercially benefit from the fame associated with Complainant’s established mark. Respondent’s behavior demonstrates bad faith registration and use within the meaning of Policy ¶ 4(b)(iv). Respondent’s sole purpose in registering domain names reflecting Complainant’s BARBIE mark was to maximize the amount of Internet traffic it could divert to Respondent’s website. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).
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 <cajunbarbie.com> and <pornbarbie.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2002
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