Mattel, Inc. v. Eva Avots c/o Domainator.com
Claim Number: FA0802001153561
Complainant is Mattel, Inc. (“Complainant”), represented by Nikitas
E. Nicolakis, of Dunnegan LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotwheelstrader.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2008.
On February 27, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hotwheelstrader.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 2008 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.
A timely Response was received and determined to be complete on March 24, 2008.
An Additional Submission was submitted by Complainant on April 1, 2008 and was determined to be deficient. The Panel has chosen not to consider this Additional Submission in its Decision.
A timely Additional Submission was submitted by Respondent on April 8, 2008. Given that this submission concerns an issue raised in the Complainant’s deficient Additional Submission, the Panel has chosen not to consider this Additional Submission in its Decision.
On March 31, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
-Complainant owns the trademark for HOT WHEELS and has received U.S. Certificate of Trademark Registration Nos. 843,156 for scale model toys; 884,563 for toy miniature automobiles and accessories; and 1,810,905 for toy vehicles and race sets. These registrations are valid and subsisting.
-The disputed domain names are confusingly similar to and dilutive of Complainant's registered trademark for HOT WHEELS within the meaning of the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. Sect. 1125(d).
-Respondent is not commonly known by the name HOT WHEELS and has acquired no trademark or service mark rights to the domain name.
-Respondent has not made a legitimate non-commercial or fair use of this domain name. The URL address <hotwheelstrader.com> is a commercial website in which Respondent is accepting offers for the domain name.
-In connection with its HOT WHEELS line of products, Complainant uses many domain names, including, but not limited to, <hotwheels.com> and <hotwheelscollectors.com>.
-Respondent has used the <hotwheelstrader.com> domain name with the intent to trade on the goodwill Complainant has in its HOT WHEELS products, and to enhance the commercial value of his own services.
-By using the <hotwheelstrader.com> domain name, Respondent has diluted, and will continue to dilute, the distinctive quality of the HOT WHEELS trademark by lessening its capacity to identify Complainant's products and services in violation of the Federal Anti-Dilution Act, 15 U.S.C. Section 1125(c). Respondent's use of the <hotwheelstrader.com> domain name has infringed and will continue to infringe the HOT WHEELS trademark in violation of 15 U.S.C. Section 114(a).
-By letter and e-mail dated June 28, 2007, Complainant demanded that Respondent transfer ownership of the <hotwheelstrader.com> domain name to Complainant. A follow-up email dated November 8, 2007 was sent warning Respondent that appropriate legal action would be taken.
-The <hotwheelstrader.com> domain name does not include Complainant’s trademark: the domain name consists of three generic words which have no spaces between them and it is not capitalized.
-Complainant has acquired no trademark or service mark rights to the domain name <hotwheelstrader.com>
-Respondent purchased the <hotwheelstrader.com> domain name on an Internet auction site and did not merely add “trader” after it.
-Respondent acquired the <hotwheelstrader.com> domain name with the intention of creating a website relating to infromation and registration of classic automobiles, hot rods, muscle cars and custom cars and uniting the hobbyist community (full size, real cars).
-Currently <hotwheelstrader.com> is being used as a parking page and template for the sole purpose of parking and testing the future potential of this domain name. All links in the parking template refer to sites that deal in hot rods, classic cars, custom cars, etc.
-Respondent has never used or made reference to Complainant’s HOT WHEELS logo on the web page nor are there any links to scale model toys, for toy miniature automobiles and accessories or for toy vehicles and race sets that Mattel manufacturers or any competitors of Complainant.
-Respondent has rights and a legitimate interest since sometimes her and/or her wheels as referred to as “hot wheels”.
-Respondent registered the disputed domain name on September 16, 2004
-Respondent did not register nor use the domain name in bad faith: the registration does not block Complainant from using another domain name that includes Complainant’s HOT WHEELS trademark
-The domain name <hotwheelstrader.com> has not been used by Respondent for commercial purposes and Respondent has legal disclaimer on the web page regarding the sale of domain enquiry form.
-Complainant's request for transfer of the disputed domain name should be denied.
Complainant is a large and prominent toy manufacturer who has trademark rights in the trademark HOT WHEELS.
Respondent is an individual who owns the disputed domain name but has provided no further evidence as to her identity or association with “hot wheels” nor any other legitimate interest in the <hotwheelstrader.com> domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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 exhibited copies of its
Respondent has added the word
"trader", but it is a descriptive add-on. "Trader"
obviously denotes a website where there is buying, selling and perhaps
bartering of Hot Wheels. Adding "trader" does not allow Respondent to
create a distinctive mark or domain name of its own. In this regard, see Compaq Info. Techs.
Group L.P. v. Dealer Direct, Inc., FA 97062 (Nat. Arb. Forum June 14, 2001)
(finding that the domain names <compaqdirect.com>,
<compaqonline.com> and <compaqdirectplus.com> are logical add-ons
to the trademark COMPAQ). The addition of generic terms is insufficient to distinguish
the domain names from Complainant’s marks. See
also Arthur Guinness Son & Co. (
The Panel thus finds Complainant has carried its burden of proof under Policy ¶ 4(a)(i) to show that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant contends Respondent has no right to use the disputed domain name and Complainant has written to Respondent to that effect. Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
For her part, Respondent states that her intention of acquiring and registering the domain name was to create “a website relating to information and restoration of classic automobiles, hot rods, muscle cars and custom cars” and “uniting the hobbyist community”. Respondent contends she is making a fair use of the disputed domain name by using it as automated parking space for the sole purpose of parking and testing the future potential of this domain name. By Respondent’s own admission, this use has been ongoing since September 2004 when Respondent registered the domain name; a circumstance which begs the question: how much time does Respondent need to assess the potential of a domain name? No explication is given by Respondent as to when actual use will be made of the domain name. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim). In summary, Respondent has not established any right or legitimate interest in the domain name.
Furthermore, Respondent states that “all links in the parking template refer to sites that deal in hot rods, classic cars, custom cars, etc.” which is purportedly all part and parcel of Respondent’s testing of the domain name’s potential. However Respondent’s Exhibit B, a copy of the web page located at <hotwheelstrader.com>, lists many links none of which are related to cars of any sort and the evidence provided therefore refutes Respondent’s own arguments.
The Panel is therefore forced to conclude
that Respondent's use of the disputed domain name is neither a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). The domain is being used as a
click-through site leading to other websites that also are commercial. The
Panel believes it proper to infer that Respondent derives income from
advertising and from funneling potential clients to commercial websites. See
Tercent Inc. v.
Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Constellation Wines
The Panel finds Complainant has carried its burden of proof to show Respondent has no legitimate rights or interests in the disputed domain names under Policy ¶ 4(a)(ii).
Under Paragraph 4(a)(iii), it is necessary for the Complainant to show that the domain name both was registered and is being used in bad faith.
Policy ¶ 4(b) provides a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith for purposes of Policy ¶ 4(a)(iii). These include:
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of her web site or location or of a product or service on her web site or location.
Indeed this is the ground on which Complainant contends Respondent is violating the bad faith provisions of the Policy, in that Respondent is using Complainant's HOT WHEELS trademark to attract the public to Respondent's website for commercial gain.
Above it was decided that Respondent has failed to establish any legitimate interest or right in the domain name, whilst Complainant is a large company that has built many notable toy trademarks, including the HOT WHEELS trademark at issue in this case. The totality of the circumstances allows the Panel to draw the conclusion that Respondent had constructive knowledge of Complainant’s marks on registering the domain name. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
Respondent is an individual seeking to make money on advertising and customer procurement by creating a likelihood of confusion with Complainant’s marks and the Panel concludes that there is bad faith use as defined in Policy ¶ 4(b)(iv).
The Panel concludes Complainant has carried its burden of proof to show Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotwheelstrader.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: April 21, 2008
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