Mattel, Inc. v. Sinclare Vabalon, BHG
Claim Number: FA0805001191584
Complainant is Mattel, Inc. (“Complainant”), represented by Nikitas
E. Nikolakis, of Dunnegan LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <flippinfrogs.com>, registered with Basic Fusion, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 19, 2008.
On May 19, 2008, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <flippinfrogs.com> domain name is registered with Basic Fusion, Inc. and that Respondent is the current registrant of the name. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, 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 May
22, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 11, 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 postmaster@flippinfrogs.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <flippinfrogs.com> domain name is identical to Complainant’s FLIPPIN’ FROGS mark.
2. Respondent does not have any rights or legitimate interests in the <flippinfrogs.com> domain name.
3. Respondent registered and used the <flippinfrogs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., is one of the world’s most well-known manufacturers of toys and games for children. Complainant registered the FLIPPIN’ FROGS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,361,428, issued Jan. 1, 2008, filed Jan. 5, 2007).
Respondent registered the disputed domain name on December 24, 2007. The <flippinfrogs.com> domain name resolves to a third-party links page not related to Complainant, or Complainant’s business.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant’s registration of the FLIPPIN’
FROGS trademark with the USPTO establishes its rights under Policy ¶
4(a)(i). See Metro.
Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration
adequately demonstrates a complainant’s rights in a mark under Policy ¶
4(a)(i)); see also Morgan
Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding
from a preponderance of the evidence that the complainant had registered its
mark with national trademark authorities, the Panel determined that “such
registrations present a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Although the disputed domain name was
registered before the trademark registration, the Panel finds that Complainant’s
rights in the mark extend back to the date of the mark’s filing with the USPTO.
The filing date was more than 10 months prior to Respondent’s registration. See Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal
rights is . . . the filing date of its issued registration.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of the complainant’s trademark rights date
back to the application’s filing date).
Respondent’s <flippinfrogs.com>
domain name is identical to Complainant’s FLIPPIN’ FROGS mark, as it incorporates
the mark in its entirety, removes the apostrophe and space, and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the removals of punctuation and spaces do not
affect a Policy ¶ 4(a)(i) analysis.
Also, the addition of the gTLD “.com” is irrelevant. Therefore, the Panel finds that the disputed
domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com –
Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the omission of an apostrophe did not significantly distinguish
the domain name from the mark); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <flippinfrogs.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Once Complainant has made a prima facie showing, the burden of proof shifts to Respondent. The Panel finds Complainant has met its burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges that Respondent is not commonly known by
the <flippinfrogs.com> domain
name pursuant to Policy ¶ 4(c)(ii). The
record contains nothing to suggest Respondent is commonly known by the disputed
domain name. The WHOIS information
identifies Respondent as “Sinclare Vabalon,” with no reference to the <flippinfrogs.com> domain
name. Respondent is in no way licensed
or authorized to use the FLIPPIN’ FROGS trademark. The Panel finds that Respondent has no rights
or legitimate interests to the <flippinfrogs.com>
domain name under Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The <flippinfrogs.com> domain name resolves to a website containing links to unrelated third-party websites. The Panel presumes that Respondent is using the disputed domain name for monetary gain, by capitalizing on the good reputation of Complainant’s mark. The Panel finds this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that the Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <flippinfrogs.com> domain name, which is identical to Complainant’s FLIPPIN’ FROGS trademark, is likely to cause confusion to customers searching for Complainant’s goods and services. There may be confusion regarding Complainant’s affiliation, endorsement, or sponsorship of the links advertised on Respondent’s resolving website. The Panel can assume Respondent is commercially benefiting from this confusion. Based on the findings, the Panel concludes the registration and use of the <flippinfrogs.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that the Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flippinfrogs.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 1, 2008
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