Mattel, Inc. v. Choi Yoon-Jung
Claim Number: FA0207000114753
Complainant is Mattel, Inc., El Segundo, CA, USA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan. Respondent is Choi Yoon-Jung, Seocho-Gu, Seoul, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbieshow.com>, registered with DotRegistrar.com.
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 July 1, 2002; the Forum received a hard copy of the Complaint on July 8, 2002.
On July 8, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain name <barbieshow.com> is registered with DotRegistrar.com and that Respondent is the current registrant of the name. DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.com 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 July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 1, 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 August 12, 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 name be transferred from Respondent to Complainant.
1. Respondent’s <barbieshow.com> domain name is confusingly similar to Complainant’s BARBIE registered mark.
2. Respondent does not have any rights or legitimate interests in the <barbieshow.com> domain name.
3. Respondent registered and uses the <barbieshow.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trademarks for the BARBIE mark as listed on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”). More specifically, Complainant owns, inter alia, USPTO Reg. Nos. 689,055 issued December 1, 1959 and subsequently renewed in 1979 and 2001; 728,811 issued March 20, 1962 and renewed in 1982; and, 741,208 issued November 27, 1962 and renewed in 1982.
Complainant’s BARBIE mark denotes goods including, but not limited to: dolls, toys, clothes, accessories, plastic ware, magazine for teenagers and children, cosmetics, jewelry, Halloween costumes, purses and CD-ROM games and songs. Complainant also operates from the following domain names: <barbie.com>, <barbieshop.com> and <barbieworld.com>, among others.
Complainant’s BARBIE mark and corresponding products have become internationally known and recognized as affiliated with Complainant.
Respondent registered the <barbieshow.com> domain name on January 18, 2001. Complainant’s investigation reveals that Respondent’s domain name currently resolves to a website entitled “SHOWPOP Figure Doll & Culture,” which advertises dolls.
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 sufficiently demonstrated its rights in the BARBIE mark through executing various registrations with the USPTO and continuous use of the mark in commerce since at least May 9, 1958.
Respondent’s <barbieshow.com> domain name is confusingly similar to Complainant’s BARBIE mark. Respondent’s domain name deviates from Complainant’s famous mark only with the addition of “show,” a word that bears a plausible relation to Complainant’s product. The addition of a descriptive word, which describes Complainant’s business, to a famous mark in the second level of a domain name fails to create a separate or distinct mark; thus, Respondent’s domain name is rendered confusingly similar. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to dispute Complainant’s allegations and contentions; thus, the Panel is permitted to make all reasonable inferences in favor of 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Additionally, when Respondent’s rights and legitimate interests in the domain name are not apparent to the Panel and Respondent fails to corroborate its registration of the domain name with evidence, it is presumed that Respondent lacks rights and legitimate interests in the domain name. Respondent has effectively failed to satisfy its burden of proving legitimate registration of the domain name in the face of Complainant’s unrefuted evidence. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent utilizes Complainant’s famous BARBIE mark to divert unsuspecting Internet users to its competing website. Respondent’s unauthorized use of Complainant’s mark for its commercial benefit is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Respondent’s “SHOWPOP! Figure Doll and Culture” website represents an opportunistic attempt to trade off the goodwill and fame associated with Complainant’s BARBIE mark. Therefore, Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a Respondent’s operation of website using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
Complainant’s investigation yielded no trademark or service mark registrations or applications reflecting Respondent’s <barbieshow.com> domain name, or a corresponding BARBIE SHOW mark. Because Complainant’s BARBIE mark is famous and internationally recognized, it is presumed that Respondent is not commonly known by the subject domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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 CBS Broad., 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).
Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
As stated, Respondent uses Complainant’s famous and highly identifiable BARBIE mark in conjunction with its commercially motivated website that offers competing goods. Complainant’s uncontested evidence indicates that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BARBIE mark. Therefore, Respondent’s registration and use of the infringing domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).
Respondent’s registration and use of a domain name that incorporates Complainant’s famous BARBIE mark in its entirety represents opportunistic bad faith under Policy ¶ 4(a)(iii). When considering the totality of the circumstances, it may be inferred that Respondent’s registration of the disputed domain name was motivated by the fame associated with Complainant’s mark, and the probable Internet traffic that would result from a perceived affiliation with the BARBIE mark. Paragraph 4(b) is a non-exhaustive listing of bad faith evidence. Respondent’s opportunistic bad faith registration and use of Complainant’s mark warrants a general finding of bad faith because the Panel will not endorse Respondent benefiting from Complainant’s extensive efforts in establishing its BARBIE mark among the public. See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic 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 relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <barbieshow.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 26, 2002
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