Mattel, Inc. v.
Claim Number: FA0811001234340
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Dunnegan LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trailertrashbarbie.com> ( the “Domain Name”), registered with Compana, Llc.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2008.
On November 18, 2008, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 November 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 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 December 10, 2008.
On December 15, 2008, a timely Additional Submission by the Complainant was received and determined to be complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
Also on December 15, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
On December 23, 2008, a timely Respondent’s Objection and Reply to Complainant’s Additional Submission was received.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The Domain Name Is Confusingly Similar to Complainant’s Trademarks.
BARBIE is a famous trademark owned by Complainant registered with the United States Patent and Trademark Office (USPTO) under number 728,811 on March 20, 1962 and renewed on May 10, 2002. Complainant’s rights in the BARBIE mark long predate Respondent’s registration of the subject Domain Name on March 19, 2005. Complainant’s registration of its mark with a national authority is sufficient to establish that Complainant has trademark rights for the purposes of Policy 4(a)(i).
The domain name contains Complainant’s BARBIE mark followed by the generic top-level domain (“gTLD”) “.com.” Within the domain name, the phrase “trailer trash” precedes Complainant’s BARBIE mark. Complainant argues that this does not distinguish the domain name from Complainant’s BARBIE mark. See Mattel, Inc. v. Harems Internet Services, Inc., FA 262995 (Nat. Arb. Forum June 14, 2004) ( The panel notes that the domain name fully incorporates the mark and merely adds the descriptive term “belle.”).
Respondent’s argument that its Domain Name is not confusingly similar to Complainant’s BARBIE trademark is incorrect. Panels of the National Arbitration Forum have previously held that domain names consisting of “Barbie” and an antecedent are substantially similar to Complainant’s BARBIE trademark. See Mattel, Inc. v. Dan Rukes, FA 99678 (Nat. Arb. Forum Oct. 31, 2001) (<collectablebarbie.com> and <collectiblebarbie.com> transferred); see also Mattel, Inc. v. Domain Park Ltd., FA 1164348 (Nat. Arb. Forum Apr. 30, 2008) (<letsplaybarbie.com> transferred). The fact that Complainant has not a secure trademark registration for the Domain Name is irrelevant.
2. Respondent has no rights or legitimate interests in respect of the domain name.
Complainant asserts that Respondent holds no rights or legitimate interests in the Domain Name and that Respondent is not commonly known by the name BARBIE. Complainant has certainly not authorized Respondent to make any use of its famous trademark and Respondent has not provided any evidence that it owns any trademark rights.
Further, Respondent has not made a legitimate noncommercial or fair use of the disputed domain name and has not provide any evidence that it is making a fair use of that term. The Domain Name is used as a commercial hits page that directs traffic to other sites. The content of its website does not suggest Respondent’s supposed woman “identifiable by orange or white bleached hair, blue eye shadow, and a fashion sense that is at least 10 years old.” Indeed, the woman shown on the website is the antithesis of Respondent’s description of a “Trailer Trash Barbie.” Rather than a fair use, Respondent is using that Domain Name to generate Internet traffic, and profit from it.
Complainant claims that following those arguments Respondent does not have any rights or legitimate interests to the domain name in question and that accordingly, Policy 4(a)(ii) has been satisfied.
3. Respondent’s Domain Name Was Registered and Is Being Used in Bad Faith.
Complainant asserts that Respondent has registered the Domain Name in bad faith. The registration of the Domain Name blocks Complainant from using this Domain Name for its own business. In connection with its BARBIE line of products, Complainant uses domain names, including, but not limited to, <barbie.com> and <barbiecollector.com>.
Further, Respondent has used the Domain Name with the intent to trade on the goodwill Complainant has earned in its BARBIE products, and to enhance the commercial value of its own services. and that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent has damaged the reputation, business and goodwill of Complainant. By using the Domain Name, Respondent has diluted the distinctive quality of the BARBIE trademark by lessening its capacity to identify Complainant’s products and services in violation of the Federal Anti-Dilution Act, 15 U.S.C § 1125 (c), and also infringed the BARBIE Trademark in violation of 15 U.S.C. § 1114 (a).
Respondent’s failure to admit that, as of its
registration of the domain in 2005, that it had not heard of Mattel’s Barbie
doll is so dubious that it itself provides evidence of Respondent’s bad faith.
While Respondent claims that it has registered thousands of domain names
consisting of generic words, Respondent forgot to mention that it has lost, as
the respondent, 77 UDRP proceedings administered by WIPO. See Nationwide Mut. Ins. Co. v.
When Complainant learned of Respondent’s use of the confusingly similar Domain Name, Complainant requested that Respondent transfer ownership of the domain name <trailertrashbarbie.com> to Complainant. Respondent has sent no response with Complainant’s demand.
Respondent’s registration and use of the subject domain name was and is in bad faith. Accordingly, Policy ¶ 4(a)(iii) has been satisfied.
Respondent asserts that Complainant’s right in its marks does not give it any protection with respect to the disputed Domain Name. The disputed Domain Name is nothing more than what has become a very common phrase to describe a particular type of person unrelated to the doll of Complainant, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. As a result, the disputed Domain Name is composed of generic terms and accordingly cannot be confusingly similar to Complainant’s mark. While Complainant focuses on its “fame,” that is truly a trademark concept not applicable to the Policy. See Mattel, Inc. v. Robert, FA 271644 (Nat. Arb. Forum June 30, 2004) (Finding that Mattel’s allegations of fame of BARBIE mark insufficient to establish that <caligirlbarbie.com> was “similarly confusing” to mark). What is relevant in this case is whether the average consumer would think of “Trailer Trash Barbie” as a good or service of which Mattel is the source, or would he think of the term as a descriptive of a certain type of woman. While decisions under the policy are replete with decisions that find the domain names combine the mark with the goods or services sold under that mark are “confusingly similar,” the opposite is true where the additional words alleviate the risk of any confusion. See, e.g., Slide, Inc, v. SLIDETV.com,Inc. c/o Mkt. Dept. c/o Daniel Bryan, FA 1212529 (Nat. Arb. Forum Aug. 13, 2008) (Finding domain names consisting of mark SLIDE which was for computer software not similar confusing when combine with “tv” and geographic locations). Respondent says that the disputed Domain Name is not confusingly similar to any mark held by Complainant.
The disputed Domain Name consists of a phrase in such widespread use that the image invoked has nothing to do with Complainant or its products. Respondent argues that “Barbie” is Australian for barbecue grill, a common English language name. Respondent further provides evidence of colloquialisms and urban slang that utilizes the “trailer trash barbie” term. In summary, Respondent argues that the disputed domain name consists of a common name and is a commonly-used phrase in the English language.
Respondent points out that there are only two sentences and “less than sixty words” in the Complaint that address arguments under Policy ¶ 4(a)(ii) to demonstrate that Complainant has not made a prima facie case against Respondent.
Respondent contends that the disputed domain
name resolves to a website that provides targeted advertising under a
third-party contract with an entity named “Hitfarm.” The content for the page
is provided by Hitfarm and Respondent has no control over the picture. Turning
Complainant’s argument around to show it is meaningless; the picture on the
page is not a picture of any of Complainant’s products either. As a result,
there can be no finding of “similarly confusing,” especially given
Complainant’s complete failure to advance any argument as to how a consumer
would confuse its mark BARBIE for dolls with the term “trailer trash.”
Respondent argues that its purpose in registering the disputed Domain Name and
in utilizing it in this manner is to capitalize on the use of the descriptive
terms contained in this URL address. Respondent asserts what it titles as the
“fair use” defense under Chapter 15 of the United States Code, Section
1115(b)(4). Respondent argues that its commercial use of terms in their
descriptive sense is allowed under
Respondent highlights that Respondent provides no evidence supporting its contentions under Policy ¶ 4(a)(iii) other than a copy of the resolving website. Respondent states that he registered the domain name in good faith and he has rights and a legitimate interest in the disputed Domain Name. Additionally, Respondent reiterates its rights and legitimate interests in the disputed domain name as derivative of the disputed domain name’s composition of common terms.
Even though Complainant contends that Respondent has registered and is using the disputed Domain Name in bad faith under the auspices of Policy ¶ 4(b)(iv), Respondent argues that it is utilizing the disputed Domain Name as a pay-per-click website, offering advertisements and links directly related to the terms of which the disputed Domain Name is composed.
Next, Complainant asserts that Respondent failed to admit that it had not heard of Mattel’s Barbie. Foremost, even if Respondent had not heard of a certain generic usage of “Barbie doll” to refer to a child’s toy, that does not mean that it was aware of and targeting the Complainant Mattel’s Barbie, i.e. that it knew and was aware of Complainant’s mark and registered the Domain Name for that purpose.
It is true that Respondent has been involved in a number of UDRP decisions in the past but Respondent has prevailed in twelve decisions, and has also prevailed on one domain in a four-domain decision and on one domain alone in two two-domain decisions. While Respondent has been on the losing end of a number as well, the overall picture is much more nuanced than Complainant has portrayed it. Merely comparing the number of complaints without considering the broader context is misleading.
Also, prior to any discussion of the merits, if any, of Complainant’s Additional Submission, Respondent vigorously objects to such a filing. Under Rule 12 of the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), it is quite clearly stated that “In addition to the complaint and the response, the panel may request, in its sole discretion, further statements or documents from either of the Parties.” Under the Forum’s Supplemental Rules, Rule 7 allows for the filing of such statements and documents without a request from the Panel. Respondent believes that Rule 7 is an improper modification of the Rules. According to 1 of the Rules, Supplemental Rules are defined as follows: “Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, the means for communicating with the Provider and the Panel, and the form of cover sheets.” Clearly the Rules anticipate that the Supplemental Rules of any Provider are housekeeping in nature and are not meant to allow substantial modifications of the rights of the parties under the Policy. WIPO panelists, by way of example, generally hold to a “one filing rule” as observed by one recent panel, “[t]he normal procedure under these proceedings, is that Complainant is allowed to submit a Complaint, and Respondent is allowed to submit a Response. Even though the Response in this case was filed late, this should not alter the main principle of one shot each.” Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc., D2005-0603 (WIPO Oct. 6, 2005).
Furthermore, such submission is beyond the scope of the Supplemental Rules. Assuming that the Forum has and will accept such an unsolicited filing, Complainant has gone beyond the scope of Rule 7 whose very title is “Submission of other Written Statements and Documents; No Amendment to the Complaint.” A check of Merriam-Webster Online shows that the very first listed definition for “statement” is “something stated as a single declaration or remark.” (internal markings omitted). What Complainant has filed instead of “declarations or remarks” is an undisguised attempt to amend its Complaint which violates the Forum’s own Supplemental Rules. Complainant’s Additional Submission contains no facts or evidence which could not have been filed in the Complaint. Such use of the shorter “five day” response period under NAF Supplemental Rule 7 is an invitation to abuse the supplemental rule by “sandbagging” in order to present the complainant’s case in chief as a “supplement” in order to shorten the effective response period, which is exactly what has been done here. To allow such an amendment is grossly unfair to Respondent.
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.
Objections to the Filing of Complainant’s Additional Submission
Respondent mainly asserts that Rule 7 of the Supplemental Rules is an improper modification of the Rules for the Uniform Domain Name Dispute Resolution Policy (“the Rules”). The Panel does not wish to decide whether Rule 7 of the Supplemental Rules is an improper modification of the Rules. For that reason, we allow Complainant’s Additional Submission and we also allow Respondent’s Reply to Complainant’s Additional Submission which on the balance of probabilities do not change our decision.
Complainant asserts rights in the
BARBIE mark through its registration of the trademark with the United States
Patent and Trademark Office (“USPTO”). The
Panel finds that Complainant has sufficiently established rights in the BARBIE
mark through registration of the mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 728,811 issued March 20, 1962) pursuant to
Policy ¶ 4(a)(i).
Within the <trailertrashbarbie.com> domain name, the phrase “trailer trash” precedes Complainant’s BARBIE mark. Complainant argues that this does not negate a finding of confusing similarity. Although “trailer trash” has been able to acquire a certain significance, it is still in association with the original Barbie, the doll of Complainant and it would be difficult to separate the two. The Panel considers the addition of a generic phrase such as “trailer trash” to be insufficient to differentiate a disputed Domain Name from the BARBIE trademark. See Mattel, Inc. v. firstname.lastname@example.org, FA 187609 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word ‘porn’ to Complainant's registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant's mark and the domain name currently in dispute.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). For these aforementioned reasons, the Panel finds that the <trailertrashbarbie.com> Domain Name is confusingly similar to Complainant’s BARBIE mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <trailertrashbarbie.com> Domain Name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed Domain Name is identical or confusingly similar to Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the terms contained in the disputed Domain Name were generic failed under Policy ¶ 4(a)(i)).
Complainant has met the first requirement of the Policy.
Since Complainant made a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(ii), 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.”).
Complainant plainly asserts that “Respondent is not commonly known by the name BARBIE and has acquired no trademark or service mark rights in the [<trailertrashbarbie.com>] domain name.” The WHOIS information identifies Respondent as “Texas International Property Associates – NA NA.” The Panel determines that this does not establish a sufficient connection between Respondent and the disputed Domain Name. Furthermore, Respondent does not counter this argument in its Response. Without any additional information in the record, the Panel concludes that Respondent is not commonly known by the <trailertrashbarbie.com> domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed Domain Name where there is no evidence in the record indicating that the Respondent is commonly known by the disputed Domain Name).
Complainant alleges that “Respondent has not made a legitimate non-commercial [sic] or fair use of the disputed Domain Name. The [<trailertrashbarbie.com>] domain name … is used as a commercial hits page that directs traffic to other sites.” The Panel agrees that the disputed Domain Name resolves to a links page that redirects Internet users to unrelated third-party websites, it finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) of the disputed domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The second requirement of the Policy has been met.
Complainant argues first that Respondent registered and is using the disputed Domain Name for the purpose of preventing Complainant from using this Domain Name for its own business. Under Policy ¶ 4(b)(ii), bad faith can be established if evidence is provided demonstrating that a respondent registered and is using a disputed domain name for the purpose of preventing the owner of a trademark or service mark from reflecting that mark in the corresponding domain name, provided that one demonstrates that the respondent has engaged in a pattern of such conduct. The Panel finds that a sufficient pattern has been established showing that Respondent registered the disputed Domain Name primarily for the purpose of preventing Complainant from reflecting its mark in the disputed Domain Name; the Panel is of the opinion that Respondent registered and is using the <trailertrashbarbie.com> Domain Name in bad faith pursuant to Policy ¶ 4(b)(ii). See Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent registered the <toshibastrata.com> domain name to prevent the complainant from reflecting the TOSHIBA and STRATA marks in a corresponding domain name); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).
Additionally, Complainant asserts and the Panel finds that Respondent’s registration and use of the disputed Domain Name has damaged the reputation, business and goodwill of Complainant. Complainant contends and the Panel finds that Respondent has used the disputed Domain Name with the intent to trade on the goodwill Complainant has earned in its BARBIE products, and to enhance the commercial value of its own services.” The near identical correspondence between the disputed Domain Name and the Complainant’s trademark is far beyond what can be explained as coincidence, and strongly suggests a deliberate and bath faith intention to unjustly benefit or profit from the goodwill associated with the Complainant’s trademark. Complainant has alleged that the disputed Domain Name is used commercially to advertise and redirect Internet users to the websites of unrelated third parties. The mere fact of diverting users in this misleading manner is evidence of bad faith. See Big Dog Holdings, Inc. d/b/a Big Dog Sportswear v. Frank day Red River farms Inc., FA 93554 (Nat. Arb. Forum Mar. 9, 2000). The Panel finds that Respondent is using the disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BARBIE mark, the Panel holds this to be further evidence of Respondent’s bad faith registration and use of the <trailertrashbarbie.com> Domain Name pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the Respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). In addition, as the Domain Name is so obviously connected to the widely-known mark and products of Complainant, its use by someone with no connection to the products is evidence of opportunistic bad faith. See Perfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, D2000-0226 (WIPO May 17, 2000).
Moreover, the proof that Respondent
has been involved in a number of UDRP past decisions in which he was found to
have act in bad faith is undeniable. The Panel finds that the long history of
domain name disputes in which Respondent was found to have acted in a bad faith
corroborates the Panel's finding of bad faith. See President & Fellows of Harvard Coll.
The third requirement of the Policy has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trailertrashbarbie.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: December 29, 2008
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