Mattel, Inc. v. Equipment Outlet Express
Claim Number: FA0206000114459
PARTIES
Complainant
is Mattel, Inc., El Segundo, CA
(“Complainant”) represented by William
Dunnegan, of Perkins & Dunnegan. Respondent is Equipment Outlet Express, Sanford, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <myhotwheels.com>,
registered with Tucows, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 31, 2002; the Forum received a hard copy of the Complaint
on June 6, 2002.
On
June 3, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <myhotwheels.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
June 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 26,
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@myhotwheels.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
July 10, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 name be transferred
from Respondent to Complainant.
A.
Complainant
The
<myhotwheels.com> domain name is confusingly similar to
Complainant’s HOT WHEELS mark.
Respondent
has no rights or legitimate interests in the <myhotwheels.com>
domain name.
Respondent
registered and used the <myhotwheels.com> domain name in bad
faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant owns numerous trademarks
registered on the Principal Register of United States Patent and Trademark
Office (“USPTO”) (Reg. Nos. 843,156; 884,563; 907,266; and 1,810,905). Complainant’s HOT WHEELS mark first gained
trademark status from the USPTO in 1968.
Complainant has since continually used the HOT WHEELS mark for scale
model toy vehicles, miniature toy automobiles and accessories, race sets, race
tracks and candy. Through Complainant’s
substantial use of the HOT WHEELS mark with its products, the mark has become
synonymous with kids’ toys and collectibles.
Respondent registered the <myhotwheels.com>
domain name on May 31, 2001. Respondent
uses the <myhotwheels.com> domain name to link to a website
development page.
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.
Identical and/or Confusingly Similar
Complainant has established its rights to
the HOT WHEELS mark through registration with the USPTO and subsequent
continuous use.
Respondent’s <myhotwheels.com>
domain name contains Complainant’s HOT WHEELS mark, absent the space, and with
the addition of the prefix “my.” Spaces
are not permitted in domain names; therefore, Respondent’s omission of the
space in the HOT WHEELS mark is inconsequential. Also, adding the common word “my” as a prefix to Complainant’s
mark in a domain name does not detract from the mark’s dominating presence in
the domain name. Therefore,
Respondent’s domain name is confusingly similar to Complainant’s mark. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5,
2000) (finding that the “domain name MYSPORTSCENTER.COM registered by
Respondent is confusingly similar to Complainant’s SportsCenter mark…”); see
also Infospace.com, Inc. v.
Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain
name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE
mark); see also NIIT Ltd. v.
Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the
“domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain name
and Respondent’s failure to respond, the Panel may presume that Respondent has
no such rights or legitimate interest 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). Furthermore, when Respondent fails to
respond, all inferences may be drawn in favor of the Complainant. See 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”).
Respondent uses the <myhotwheels.com>
domain name in order to divert Internet users seeking Complainant’s products to
an unrelated website, where Respondent attempts to grab the attention of the
diverted Internet users for commercial development of personal websites. Respondent’s use is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website); see
also AltaVista v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct
users to other, unconnected websites does not constitute a legitimate interest
in the domain name).
Respondent never asked for or received
permission from Complainant to use the HOT WHEELS mark in the disputed domain
name. There is no evidence on the
record and Respondent has not offered any evidence that it is commonly known by
<myhotwheels.com> or MYHOTWHEELS.
Respondent is only known to this Panel as Equipment Outlet Express. Thus, Respondent failed to satisfy the
burden of Policy ¶ 4(c)(ii) and has no rights or legitimate interests in the <myhotwheels.com>
domain name. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain name;
thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent had constructive notice of
Complainant’s rights in the HOT WHEELS mark due to the notoriety the mark has
gained from Complainant’s extensive use and the mark’s status as being
registered on the Principal Register of the USPTO. Thus, Respondent’s registration of the <myhotwheels.com>
domain name, despite notice of Complainant’s rights, constitutes bad faith
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
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent uses the <myhotwheels.com>
domain name for its commercial business of personal website development. Respondent registered and used the domain
name in hopes of attracting Internet users interested in developing a
website. Respondent’s use has no
connection with Complainant’s products offered under the HOT WHEELS mark. Nevertheless, the use of Complainant’s
entire mark with an insignificant addition, such as “my,” fails to dissolve all
potential source or affiliation confusion among consumers. Therefore, Respondent’s conduct represents
bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See State Fair of Texas v.
Granbury.com, FA 95288
(Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered
the domain name <bigtex.net> to infringe on Complainant’s goodwill and
attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking the Complainant’s site to its own
website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
The Panel finds that Policy ¶ 4(a)(iii)
has been satified.
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 <myhotwheels.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 12, 2002
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