Mattel, Inc. v. BUSINESS Center
Claim Number: FA0205000112630
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@cajunbarbie.com and postmaster@pornbarbie.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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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