Mattel, Inc. v. .COM Co
Claim Number: FA0210000126835
Complainant is Mattel, Inc., El Sagundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan. Respondent is .COM Co, Address Unknown (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbiesgalleries.com>, registered with TuCows, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 3, 2002; the Forum received a hard copy of the Complaint on October 7, 2002.
On October 3, 2002, TuCows, Inc. confirmed by e-mail to the Forum that the domain name <barbiesgalleries.com> is registered with TuCows, Inc. and that Respondent is the current registrant of the name. TuCows, Inc. verified that Respondent is bound by the TuCows, 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 October 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail 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. Due to an invalid postal address, the hard copy of this claim was not sent to Respondent.
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.
On November 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
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.
A. Complainant makes the following assertions:
The domain name registered by Respondent, <barbiesgalleries.com>, is confusingly similar to Complainant’s registered BARBIE mark.
Respondent does not have any rights or legitimate interests in the <barbiesgalleries.com> domain name.
Respondent registered and used the <barbiesgalleries.com> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant, Mattel, Inc., holds numerous registrations reflecting the BARBIE trademark (e.g., U.S. Reg. No. 689,055). Complainant registered this mark December 1, 1959 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and has used the BARBIE family of marks in commerce since May 9, 1958. All of Complainant’s registrations are valid and subsisting.
Complainant adopted the use of its distinctive BARBIE mark to market, inter alia, dolls, toys, clothes, accessories, magazines for teenagers, Halloween costumes, and CD-ROM games. Complainant has registered several domain names reflecting its mark, including <barbiegalleries.com>, <barbieshop.com>, and <barbieworld.com>.
Respondent, .COM Co, registered the <barbiesgalleries.com> domain name on January 6, 2001 but is not licensed or otherwise authorized to use the BARBIE mark for any purpose. Respondent’s website redirects Internet users to various pornographic websites, including <teens.freepics-r-us.com>, carrying a suggestive announcement that is inappropriate when considering Complainant’s young customers. In addition, the websites advertise <join4free.com> and claim to be “The Original 4 Free Adult Site.”
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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Identical to and/or Confusingly Similar
Complainant has established rights in its BARBIE mark through registration on the Principal Register of the USPTO, as well as by continuous and widespread use of the mark worldwide.
Respondent’s <barbiesgalleries.com> domain name is confusingly similar to Complainant’s registered BARBIE mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com” after the mark, the addition of the generic word “galleries,” and the pluralizing of Complainant’s mark. As top-level domain names are a standard feature for any domain name, its addition does not prevent a finding of confusing similarity. See 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 Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The addition of the generic word “galleries” to Complainant’s pluralized BARBIE mark also fails to sufficiently differentiate the disputed domain name from Complainant’s mark. The dominant feature of the disputed domain name remains Complainant’s registered BARBIE mark, and neither the generic word “galleries” nor the addition of the letter “s” does anything to diminish this distinction. 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); 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); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
Accordingly, the Panel finds that the <barbiesgalleries.com> domain name is confusingly similar to Complainant’s registered and distinctive BARBIE mark under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i)-(iii), Respondent can rely on a “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name,” or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby shifting the burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Furthermore, Respondent’s lack of a Response to the Complaint is in and of itself evidence of a lack of rights and legitimate interests in its domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also 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).
It is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark uses the domain name to divert Internet users to pornographic websites. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use). Respondent is using the subject domain name to redirect Internet users to pornographic websites such as <teens.freepics-r-us.com>. Respondent presumably receives a commission for such redirection, which is commercial exploitation of Complainant’s mark in violation of Policy paragraph 4(c). Furthermore, Respondent’s use of the disputed domain name tarnishes and dilutes the distinctive quality of Complainant’s registered mark, lessening the BARBIE mark’s capacity to identify Complainant’s products in violation of the Federal Anti-Dilution Act, 15 U.S.C. § 1125(c). The Panel finds that this is neither a bona fide offering of goods or services nor legitimate noncommercial or fair use of the <barbiesgalleries.com> domain name, and Complainant has met its burden under Policy ¶¶ 4(c)(i) and (iii).
Complainant has not given Respondent permission or consent to use its registered BARBIE mark and has alleged that Respondent is not “commonly known by” the name BARBIESGALLERIES or <barbiesgalleries.com>. Respondent offered no evidence that it has ever been commonly known by the disputed domain name and the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The fame of Complainant’s BARBIE mark allows the inference that the disputed domain name was registered in bad faith. Complainant has marketed children’s dolls and apparel, as well as associated products, under its registered BARBIE mark for decades. Due to the fame of the BARBIE mark and its worldwide trademark registrations, the Panel finds that Respondent’s act of registering the <barbiesgalleries.com> domain name evidences opportunistic bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
By registering and using its infringing domain name, Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] website…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement,” evidencing bad faith use and registration under Policy ¶ 4(b)(iv). In redirecting the <barbiesgalleries.com> domain name, a domain name that is confusingly similar to Complainant’s registered BARBIE mark and nearly identical to its <barbiegalleries.com> website, Respondent created a strong likelihood of confusion as to whether Respondent had any affiliation with Complainant. Respondent’s redirection, furthermore, was to several websites hosting pornographic images. Respondent presumably gained revenue for each Internet user who was diverted to the pornographic websites via Resondent’s redirect. Respondent’s actions violate Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>; presumably, Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).
Accordingly, the Panel finds that Respondent both registered and used the <barbiesgalleries.com> domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED. Accordingly, it is Ordered that the <barbiesgalleries.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 2, 2002.
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