National Arbitration Forum

 

DECISION

 

Mattel, Inc. v. Konstantinos Zournas

Claim Number: FA0806001203398

 

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by Nikitas E. Nicolakis, of Dunnegan LLC, New York, USA.  Respondent is Konstantinos Zournas (“Respondent”), Greece, Pro Se.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbitwins.com>, registered with Moniker Online Services, 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.

 

Richard DiSalle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 10, 2008.

 

On June 18, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <barbitwins.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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@barbitwins.com by e-mail.

 

A timely Response was received and determined to be complete on July 8, 2008.

 

A timely Additional Submission was received from Complainant on July 14, 2008.

 

A timely Additional Submission was received from Respondent on July 16, 2008. 

 

On July 17, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.  Complainant

Complainant Mattel, Inc. owns the trademark for BARBIE and has received multiple U.S. Certificates of Trademark Registration Nos. 728,811 issued March 20, 1962 and renewals thereof on May 10, 2002.

 

At the time of the filing of this Complaint, the disputed domain name <barbitwins.com> was registered to Konstantinos Zournas.  The disputed domain name is confusingly similar to Complainant’s registered trademark for BARBIE.

 

The disputed domain name fully incorporates Complainant's BARBIE trademark and merely removes the “e” at the end of BARBIE and inserts "twins" after it.

 

These changes do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Respondent is not commonly known by the name BARBIE and has acquired no trademark or service mark rights to the domain name <barbitwins.com>.  Respondent has not made a legitimate non-commercial or fair use of this domain name.  The URL address <barbitwins.com> is a commercial hits page containing links that direct Internet traffic to adult websites.

 

Respondent has used the domain name <barbitwins.com> with the intent to trade on the goodwill Complainant has earned in its BARBIE products, and to enhance the commercial value of his own services.  Respondent has damaged the reputation, business and goodwill of Complainant.

 

Respondent’s website displays an offer to sell the domain name at the URL address <barbitwins.com> and provides a link to Sedo’s website where Respondent’s offer to sell is also advertised. 

 

B.  Respondent

The Barbi Twins are real people.  Shane Barbi and Sia Barbi, also known as The Barbi Twins (born April 2, 1963 in San Diego, California), are identical twins and adult pin-up models.  After their parents’ divorce, Shane and Sia legally took on their mother's maiden name of Barbi.

 

They have had TV and movie scripts written exclusively for them and even their own comic book.  The official website of the “Barbi Twins” at <thebarbitwins.net> has many more details of the biography of the two women.

 

A search on the Internet search engine Google.com for the words "barbi twins" yields innumerable third-party web pages that have no reference to the words “dolls” or “toys” that Complainant’s trademark is limited to.

 

Barbi is not a misspelling of the mark Barbie.  Barbi is a common last name in many English and non-English speaking countries around the world including the United States of America.  Ancestry.com found thousands of people named Barbi living in the United States in the present or in the past.

 

Respondent acquired the domain <barbitwins.com> because he has been a fan of the “Barbi Twins” for many years. Respondent has never been “commonly known by the domain name” nor has he acquired a trademark, but that does not mean that he doesn’t have legitimate interests in the domain name.  Respondent has the intention to put up a fan website about the “Barbi Twins” in the future.

 

The domain name <barbitwins.com> was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant.  The domain name was registered because of the term “Barbi Twins” that refers to two women who were born as twins and their last name is Barbi.

 

The disputed domain was not registered, and has not been used, in bad faith. Complainant has not proffered evidence that the domain was registered with Complainant in mind or to sell it to Complainant, or to disrupt Complainant’s business.

 

Respondent is making a legitimate commercial use of the domain name <barbitwins.com> without intent to misleadingly divert consumers or to tarnish Complainant’s trademark.  The domain name <barbitwins.com> has a website that does not have the slightest resemblance in appearance or content with Complainant’s website at <barbie.com>.

 

Reverse Domain Name Hijacking

Respondent contends that Complainant launched this administrative proceeding knowing that the Complaint had no merit.  Respondent contends that in proceedings of this nature complainants are under a duty to act with honesty, and certainly not to conceal material facts.  Therefore, Respondent requests that the Administrative Panel find Complainant guilty of reverse domain name hijacking.

 

C.  Complainant’s Additional Submission

The fact that “barbi” can be a surname, or a nickname, is irrelevant to the element of whether Respondent’s domain name is confusingly similar to Complainant’s BARBIE trademark.  Complainant concedes that fact would be relevant only to the other two remaining elements.

 

Respondent’s assertion that he “has the intention to put up a fan website about the ‘Barbi Twins’ in the future,” cannot create a legitimate interest.

 

Respondent does not dispute that he uses the website at <barbitwins.com> to generate “click through” traffic to adult sites that provides him with commercial gain. These facts are, in themselves, more than enough to demonstrate bad faith.

 

Respondent, most importantly, fails to mention that he is in the business of acquiring domain names that incorporate well known trademarks or personal names.

 

D.  Respondent’s Additional Submission

Barbi is not a misspelling of the mark “Barbie.”  The domain name <barbitwins.com> incorporates the surname Barbi (Complainant agrees that Barbi is a surname) and also includes the word “twins” that differentiates this domain name from any other.

 

The Barbi Twins are 2 women named Barbi that were born as twins. “Barbi Twins” are widely known in the adult entertainment and references on them can be found in thousands of websites on the Internet and on numerous magazines.  <barbitwins.com> displays adult links, so in the adult context no visitor would assume that there has been a misspelling.

 

Respondent’s plans to develop the domain name into a fan website about the Barbi Twins models may not create a legitimate interest in respect of Complainant’s mark but that is irrelevant.  It is irrelevant because Respondent will not create a fan site about the Barbie doll but about the Barbi Twins models.  Complainant has no rights or legitimate interests in respect of the Barbi Twins women.

 

It is very clear that Respondent did not register the domain <barbitwins.com> in bad faith towards Complainant.  This is because Barbi Twins are people and not dolls or toys. This has been proven extensively and it is undisputed by Complainant.

 

It is undisputed that Respondent has registered a number of domain names, including <barbitwins.com>.  It does not constitute bad faith to merely register multiple domains, or to even offer them for sale.  There is growing precedent within US law and within the UDRP that resale of domains per se is not evidence of actionable bad faith.

 

Complainant has referred to decisions involving Respondent. Complainant provides only the cases that Respondent lost.  Complainant fails to provide the cases Respondent won.

 

FINDINGS

(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 rights or legitimate interests in respect of the domain name; and

 

(3)  the domain name has not been registered nor is being used in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the BARBIE mark through its numerous and long-standing trademark registrations with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 728,811 issued March 20, 1962) and renewals thereof.  The Panel finds these trademark registrations confer sufficient rights in the BARBIE mark for the purposes of Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).    

 

The Panel determines that the <barbitwins.com> domain name is confusingly similar to Complainant’s BARBIE mark under Policy ¶ 4(a)(i), as asserted by Complainant.  Complainant contends that the disputed domain name contains Complainant’s mark with the deletion of the letter “e” from the end of the mark, and the addition of the generic term “twins” as well as the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these modifications are not sufficient to distinguish the disputed domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000).

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that whether or not a response if filed, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).

 

Respondent admits that it is not commonly known by the <barbitwins.com> domain name for the purposes of Policy ¶ 4(c)(ii). 

 

Respondent registered the <barbitwins.com> domain name in order to establish a fan website for the “Barbi Twins,” who Respondent asserts are “identical twins and adult pin-up models.”  The <barbitwins.com> domain name is currently used to display a website containing a variety of hyperlinks to third-party websites in connection with the terms of the disputed domain name.  The Panel determines that Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Estate of Jennings v. Submachine, D2001-1042 (WIPO Oct. 25, 2001) (finding that the respondent’s use of the <garyjennings.com> domain name to provide “reviews of the author Gary Jennings’ works is fair use of the Domain Name”); see also First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest). 

 

The Panel finds that the <barbitwins.com> domain name is comprised of a common surname, “Barbi” and a generic word, “twins.”  By the nature of the disputed domain name, Respondent thus has rights in the <barbitwins.com> domain name for the purposes of Policy ¶ 4(a)(ii).  See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that the respondent’s use of <porntrumps.com> is to suggest that “pornography gets the better of things” and thus, the use is not an infringement of the complainant’s famous trademark TRUMP).   

 

Registration and Use in Bad Faith

 

Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).

The Panel concludes that Respondent did not register the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005).

 

Respondent asserts that the <barbitwins.com> domain name was not registered with the intention of selling the disputed domain name to Complainant.  Respondent asserts that the disputed domain name was registered to refer to the “Barbi Twins,” not Complainant’s BARBIE mark.  The Panel finds that Respondent has not violated Policy ¶ 4(b)(i).  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000).

 

Moreover, the Panel determines that the disputed domain name is comprised of the surname “Barbi” and the generic word “twins,” and finds that Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  SeeLowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000).

 

Reverse Domain Name Hijacking

 

Respondent has alleged that Complainant has engaged in reverse domain name hijacking through the filing of the instant Complaint as Respondent contends Complainant knew or should have known it could not satisfy either or both Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii).  Such an assertion is without merit in this case.  Complainant’s filing of the instant Complaint was based on a good faith belief in its rights to the <barbitwins.com> domain name, and as such, Complainant’s filing is not an abuse of the UDRP Policy.

 

DECISION

Since Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.  Respondent’s claim for Reverse Domain Name Hijacking is DENIED. 

 

Accordingly, it is Ordered that the <barbitwins.com> domain name REMAIN with Respondent. 

 

 

 

Richard DiSalle, Panelist
Dated:  August 8, 2008

 

 

 

 

 

National Arbitration Forum