Mattel, Inc. v. Yesbarbie
Claim Number: FA0207000114754
Complainant is Mattel, Inc., El Segundo, CA, USA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan. Respondent is Yesbarbie, Seoul, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yesbarbie.com>, registered with YesNIC Co., Ltd.
On September 10, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
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 23, 2002, YesNIC Co., Ltd. confirmed by e-mail to the Forum that the domain name <yesbarbie.com> is registered with YesNIC Co., Ltd. and that Respondent is the current registrant of the name. YesNIC Co., Ltd. has verified that Respondent is bound by the YesNIC Co., Ltd. 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 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 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 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.
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.
The <yesbarbie.com> domain name is confusingly similar to Complainant’s BARBIE mark.
Respondent has no rights or legitimate interests in the <yesbarbie.com> domain name.
Respondent has registered and used the <yesbarbie.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 689,055 for the BARBIE mark. The date of first use for the BARBIE mark has been noted as May 9, 1958. Since Complainant’s first use and registration of the BARBIE mark, Complainant has actively sought to protect the BARBIE mark by renewing its registration with the USPTO and registering the BARBIE mark for its numerous alternative uses.
Respondent registered the <yesbarbie.com> domain name on November 11, 2000. Complainant has revealed that Respondent has only used the domain name to sell dolls, including Complainant’s BARBIE dolls and re-costumed BARBIE 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.
Identical and/or Confusingly Similar
Complainant has established rights in the BARBIE mark through proof of numerous registrations with the USPTO and continuous use of the mark in commerce since 1958.
Respondent’s <yesbarbie.com> domain name contains Complainant’s entire BARBIE mark with the prefix “yes,” which is a generic word. It has been consistently held that a generic word added to a famous mark does not take the domain name out of the realm of confusing similarity. Therefore, Respondent’s domain name, incorporating Complainant’s distinct BARBIE mark, is confusingly similar to the 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 Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward and oppose Complainant’s contentions that Respondent has no rights or legitimate interests in the <yesbarbie.com> domain name. Therefore, the Panel may presume that Respondent has no such rights or legitimate interests in the 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, since Respondent has not submitted a Response, all reasonable inferences may be drawn in favor of Complainant. In addition, Complainant’s establishment of a prima facie case shifts the burden to Respondent to show rights or legitimate interests. See 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Complainant has provided evidence that Respondent uses the <yesbarbie.com> domain name in connection with a website that sells dolls, including Complainant’s BARBIE dolls. Respondent has failed to dispute Complainant’s assertions and supportive evidence of Respondent’s purported use of the domain name. Using a domain name that incorporates the mark of another to sell similar goods, goods that the mark specifically denotes, does not represent a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a fair use pursuant to Policy ¶ 4(c)(iii). See 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 Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant has never authorized Respondent to use the BARBIE mark for any purpose. Also, upon registering the domain name Respondent provided “yesbarbie” as its registration name for WHOIS purposes. However, there is no supportive proof that Respondent is commonly known as <yesbarbie.com>. It is highly unlikely that Respondent could be commonly known by a name that is substantially similar to Complainant’s well-used, longstanding and distinct BARBIE mark. 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 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <yesbarbie.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
As previously mentioned, Respondent uses Complainant’s BARBIE mark in the <yesbarbie.com> domain name for purposes of selling dolls, including BARBIE dolls, at the attached website. Hence, Respondent diverts Internet consumers that may be searching for Complainant’s BARBIE related products to a competing website. Respondent’s use of the domain name evidences an intent to create consumer confusion as to Complainant’s sponsorship or affiliation with Respondent’s infringing website. Thus, Respondent registered and uses the <yesbarbie.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
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 <yesbarbie.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: September 12, 2002
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