Mattel, Inc. v. Sharone Bertolini
Claim Number: FA0211000128820
PARTIES
Complainant is Mattel, Inc., El Segundo, CA,USA (“Complainant”) represented by William Dunnegan, Esquire of Perkins & Dunnegan. Respondent is Sharone Bertolini, pro se, Dianella, AUSTRALIA
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at issue are <americanbarbieclub.com> and <australianbarbieclub.com>, registered with PlanetDomain.
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.
M.
KELLY TILLERY, ESQUIRE
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on November 1, 2002;
the Forum received a hard copy of the Complaint on November 4, 2002.
On November 6, 2002, PlanetDomain
confirmed by e-mail to the Forum that the domain names <americanbarbieclub.com> and <australianbarbieclub.com> are registered with PlanetDomain
and that Respondent is the current registrant of the names. PlanetDomain has verified that Respondent is
bound by the PlanetDomain 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 6, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of November 26, 2002 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@americanbarbieclub.com
and postmaster@australianbarbieclub.com by e-mail.
A timely Response was received and
determined to be complete on November 25, 2002.
Complainant’s additional submissions were
received on December 2, 2002.
Respondent’s additional submissions were
received on December 2, 2002.
On December 11,
2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
(1) it
owns valid and subsisting Registered Trademarks for BARBIE and has received
U.S. Certificate of Trademark Registration Nos. 689,055 issued December 1, 1959
and renewed on December 1, 1979 and June 30, 2001; 728,811 issued March 20,
1962 and renewed on March 20, 1982; 741,208 issued November 27, 1962 and
renewed on November 27, 1982; 741,649 issued on December 4, 1962 and renewed on
December 4, 1982; 768,331 issued on April 21, 1964 and renewed on April 21,
1984; 768,397 issued on April 21, 1964 and renewed on April 21, 1984; 772,298
issued on June 30, 1964 and renewed on June 30, 1984; 810,106 issued on June
21, 1966 and renewed on June 21, 1986; 814,091 issued on August 30, 1966 and
renewed on August 30, 1986; 814,995 issued on September 13, 1966 and renewed on
September 13, 1986; 816,601 issued on October 11, 1966 and renewed on October
11, 1986; 817,200 issued on October 25, 1966 and renewed on October 25, 1986;
1,000,125 issued on December 24, 1974 and renewed on December 24, 1994;
1,041,587 issued on June 22, 1976 and renewed on June 22, 1996; 1,300,766
issued on October 16, 1984; 1,693,139 issued on June 9, 1992; 1,746,477 issued
on January 12, 1993; 1,754,535 issued on February 23, 1993; 1,769,285 issued on
May 4, 1993; 1,773,571 issued on May 25, 1993; 1,775,637 issued on June 8,
1993; 1,795,876 issued on September 28, 1993; 1,710,196 issued on August 25, 1992;
1,760,729 issued on March 23, 1993; 1,947,330 issued on January 9, 1996;
1,995,873 issued on August 20, 1996; and 2,110,856 issued November 4, 1997;
(2) the
disputed domain names are confusingly similar to and dilutive of Complainant’s
registered trademarks for BARBIE within the meaning of ICANN Policy ¶ 4(a)(i);
(3) Respondent
is not commonly known by the name “Americanbarbieclub” or
“Australianbarbieclub” and has also acquired no trademark or service mark
rights to the disputed domain names;
(4) Respondent’s
unauthorized use of the BARBIE mark for its own commercial benefit is not in
connection with a bona fide offering of goods or services;
(5) the
URL address www.americanbarbieclub.com
links to a web page called “American Barbie Club” located at the URL www.styleweaver.com/ambcindex.html;
(6) the
URL address www.australianbarbieclub.com
links to a web page called “Online Australian Barbie Club” and a similar
website located at www.styleweaver.com/bbcside.html;
(7) the domain name <styleweaver.com>
and its web pages are both owned and operated by Respondent;
(8) this
website advertises and displays dozens of
Complainant’s BARBIE dolls and information on collecting BARBIE
dolls;
(9) this
website also offers a link to “Dolls & Toys Australia” located at the URL
address www.dollsandtoysaustralia.com
where browsers can buy BARBIE dolls and many other dolls and toys;
(10) the
“Dolls and Toys” website and domain name are also owned and operated by
Respondent;
(11) Respondent
uses the BARBIE trademark to divert unsuspecting Internet users to its
competing websites;
(12) this
use of BARBIE in the domain names and websites is an attempt to trade off of
the enormous goodwill and fame associated with Complainant’s BARBIE trademarks;
(13) the registration of these domain names
blocks Complainant from using the domain names for its own business;
(14) in connection with its BARBIE line of
products, Complainant uses many domain names, including but not limited to
<barbie.com>, <barbieshop.com> and <barbieworld.com>;
(15) Complainant’s toys and dolls are sold
worldwide, including Australia;
(16)
Respondent’s
use of BARBIE in the domain names represents opportunistic bad faith solely to
benefit from Complainant’s extensive efforts in publicly promoting its BARBIE
trademarks;
(17)
a decision
ordering the transfer of the domain names to Mattel, Inc. would be
consistent with National Arbitration
Forum precedent. Mattel, Inc. v.
Choi Yoon-Jung, FA 114753 (Nat. Arb. Forum Aug. 26, 2002)
<barbieshow.com>; Mattel, Inc. v. Yesbarbie.com, FA-114754 (Nat.
Arb. Forum Sept. 12, 2002), the Forum Panel found that Respondent had no
legitimate rights in the domain name <yesbarbie.com>.
B. Respondent
Respondent contends that:
(1) the
addition of the word “club” at the end of each domain name is very important as
it actually ensures that there is no confusion with anything related to
Complainant;
(2) “clubs”
are commonly known to be a group of people with like minded hobbies;
(3) the
following words clearly appearing on every page on the websites:
“We
are not associated with Mattel, Inc. in any way and highly recommend that you
visit their website at http://www.mattel.com.”
(4) she
has collected Barbie dolls for 17 years and has spent thousands of dollars on
the dolls and accessories in her personal collection;
(5) she
is known locally as a Barbie collector and has attended meetings with other
Barbie collectors;
(6) Complainant
aggressively advertises and markets in such a way that encourages people to
become Barbie collectors and have a legitimate interest in Barbie;
(7) every
Barbie collector has a legitimate interest in Barbie and Respondent more than
most as her collection is extensive with dolls dating back to 1960;
(8) the
websites are full of information of value to collectors that she has learned
during her years of collecting and wishes to share with other collectors
provided free;
(10) there
were text links to Respondent’s website at <dollsandtoysaustralia.com>
but there were also text links to four of Complainant’s Barbie websites;
(11) “Dolls
and Toys Australia” is a hobby site where Respondent advertise toys she no
longer wishes to have in her collection, it is not a business, she has sold
only 7 toys through that website in the last 3 months and none of them were
Barbies or were as a result of a link on either <americanbarbieclub.com> or <australianbarbieclub.com>;
(12) Respondent
did not register the domain names with a commercial intent;
(13) both
of the domain names link to pages within <styleweaver.com>, another
domain name she owns, so that she does not have to pay to have the clubs hosted
as they are non-commercial and do not make any income;
(14) registered the domain names so I could
show pictures of the Barbie dolls in her collection, provide information to
Barbie collectors and to help other collectors to restore their Barbie dolls;
(15) Respondent permanently removed all links
to <dollsandtoysaustralia.com>
and added the following to every page on both
sites: “Legal Disclaimer: The information contained at our website and/or
any advice or comments made are intended only to educate, inform and assist
collectors, visitors, and the like, in various areas of Barbie collecting. This is a non-commercial website and all
information is and always will be provided completely free of charge”;
(16) the dolls pictured on <americanbarbieclub.com>
and <australianbarbieclub.com> were not and are not for sale, they
are not being advertised, just pictured;
(17) nothing is sold on <americanbarbieclub.com>
or <australianbarbieclub.com>, they are completely non-commercial;
(18) the American Barbie Club and the
Australian Barbie Club are legitimate, non-profit Internet groups of Barbie
collectors and enthusiasts and the web addresses were rightfully of her
creation.
C. Additional Submissions
·
Complainant
Complaint further contends that:
(1) the
Australian Barbie Club (“ABC”) is an international commercial BARBIE doll
collector’s club consisting of a group of BARBIE collectors operating out of
Melbourne, Australia in existence for over 12 years;
(2) ABC
operates a website located at the URL www.geocities.com/austbarbieclub.com,
produces a semi-monthly newsletter and charges a yearly membership fee;
(3)
Mattel’s
Australian office supports ABC by providing information to it relating to
BARBIE dolls;
(4)
ABC shares
information with Mattel Australia relating to its club activities and sends
Mattel its semi-monthly newsletters;
(5) neither
Mattel nor ABC have any relationship with Respondent;
(6) while
Respondent has removed the links to her commercial web page <dollsandtoysaustralia.com>,
nothing would prevent Respondent from restoring those links except a decision
favorable to Complainant.
·
Respondent
Respondent further contends that:
(1) the
links to <dollsandtoysaustralia.com>
are permanently removed;
(2)
“I don’t
really understand why this is happening but I am happy to stop using the domain
names.” (11/16/02 e-mail to the Forum).
FINDINGS
1. Complainant has met its burden to
prove by a preponderance of the credible, relevant, admissible evidence that
Respondent’s domain names are confusingly similar to marks in which Complainant
has rights. Policy ¶4(a)(i).
2. Complainant
has met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondent has no rights or legitimate interest in
respect to the domain names. Policy
¶4(a)(ii).
3.
Complainant has met its burden to prove by a preponderance of the credible,
relevant, admissible evidence that Respondent’s domain names have been
registered and are being used in bad faith.
Policy ¶4(a)(iii).
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 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 the Complainant has rights;
(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.
Respondent has indicated by e-mail to NAF
that she is “ . . . happy to stop using the domain names.” Although she may transfer the domain names
(Policy 8(a)), she has not done so.
Although this Arbitrator could accept this as an admission of all
well-plead facts (See, e.g. Federal Rule of Civil Procedure
8(d)), Respondent has also responded to each claim of Complainant as required
by Policy ¶5(b)(i) and (viii). Thus,
the merits of the claims and defenses will be addressed.
Identical and/or Confusingly Similar
Respondent does not dispute that Complainant
owns a number of valid, live and subsisting trademarks registered with the U.S.
Patent and Trademark Office for BARBIE, the registrations for which all predate
any use by Complainant of the two domain names in question. Respondent acknowledges that she has long
been well aware of Complainant’s BARBIE trademarks. Even without such evidence of actual notice, the Lanham Act
provides that she will be held to be aware of same by way of constructive
notice. 15 U.S.C. Section 1072.
The domain names in question are not
identical to the marks registered by Complainant. Both use “BARBIE” but add at the end the word “club” and at the
beginning the word “American” in one and “Australian” in the other. The addition of the adjectives “American”
and “Australian” and/or the designation “club” do not in any way substantially
change the overall impression of the primary and famous mark. Respondent does
not dispute that BARBIE is manufactured by an American company from El Segundo,
California and is a uniquely American phenomena though sold and distributed
throughout the world including where Complainant lives, Australia. The fact that the domain names reference a
“club” does not detract from the predominant feature of the domain names which
is the mark “BARBIE.” The overall
impression of the two domain names is that if one visits the site with said
URL’s, one is likely to find an American Club which features and/or celebrates
BARBIE and something similar for the Australian site.
Under these circumstances, this Arbitrator
has no trouble finding that the domain names in question are confusingly
similar to registered marks owned by Complainant.
The Disclaimer
Respondent contends that it includes
disclaimers on its websites to indicate that it is not associated with Complainant. Such disclaimers are too little too
late.
Respondent’s use of a disclaimer, even if
it does appear on every page of its websites, is insufficient to dispel the
confusion. The mark and the domain
names in question are confusingly similar on their face. Such confusing similarity exists no matter
to what type of site the Internet surfer is directed when selecting the domain
name. The initial interest confusion caused
by the similarity between the mark and the domain names is not
disspelled or remedied by the disclaimer in question. Cavalera v. 420 Gear, FA 96315 (Nat. Arb. Forum Jan. 25,
2001); AT&T Wireless Services v. Phone Center, D2000-0678 (WIPO Nov.
11, 2000); Wilson Art Intl. v. Internet Communications, FA 97009 (Nat.
Arb. Forum May 10, 2001); Math Works v. Matt Lab, FA 96946 (Nat. Arb.
Forum May 14, 2001); Dollar Financial Group v. Cash Til Payday Loan, FA
97032 (Nat. Arb. Forum May 14, 2001); Findley Publishing v. Casey Allen
Creative Associates, FA 97029 (Nat. Arb. Forum May 21, 2001). By the time an Internet surfer has selected
one of the domain name in question and is then directed to the websites, he or
she has already been confused. Thus,
the owner of the mark is harmed, as may be the Internet surfer. The effect of the disclaimer, if it is
effective at all, may be to redirect the surfer elsewhere but not necessarily
to the legitimate authorized sites of Complainant. Daimler Chrysler v. Bargman, D2000-0222 (WIPO May 29,
2000).
Rights or Legitimate Interests
Respondent contends that she operates a
purely informational fan club site that is non-commercial and which merely
provides information about Barbie dolls and more particularly her collection
thereof. Respondent does acknowledge that
the disputed domain names did, prior to the filing of this Complaint, link to
websites at which goods were in fact sold by Respondent, although on an
allegedly limited basis.
Thus, the only provision of Policy ¶4(c)
which could conceivably benefit Respondent is Policy ¶4(c)(iii). Respondent contends that it is now only “. .
. making a legitimate non-commercial or fair use of the domain name without
intent for commercial gain to misleadingly divert customers or to tarnish the
trademark or service mark at issue.”
Policy ¶4(c)(iii). Respondent
acknowledges some, albeit limited, commercial use of the domain names in
question at least as of the time the Complaint was filed.
This Arbitrator does not believe that
mere post-filing cessation of said commercial activity, however limited, is
sufficient to “cleanse” Respondent of the taint of commerciality and give her
the benefit of Policy ¶4(c)(iii).
Further, this Arbitrator does not believe
that merely being a fan of trademarked goods or services and setting up a “fan
club” website is sufficient to give a Respondent “rights to or legitimate
interests in” domain names which include as their predominant feature the
trademark registered and owned by another.
If such “fan” interest were, in and of itself, sufficient to establish
“rights to or legitimate interest in” a domain name, one might easily become a
“fan” of any trademarked goods or services and attempt to include same in one’s
domain name. This Arbitrator does not
believe that it was the intent of the Policy to condone such activity to the
detriment of the trademark rights of registered trademark owners.
As Robert A. Badgley has observed:
From a trademark owner’s perspective, one
danger inherent in unofficial “fan sites”, is the trademark owner’s inability
to control the site’s content. The
enthusiastic operator of the site may have different tastes, values and manners
of expression from those of the trademark owner whose goods or services are
ostensibly being praised at the site.
And of course, one man’s praise may be another man’s criticism.
Badgley, Domain Name Disputes
(Aspen Law & Business, 2002) Section 9.04.
A number of other Panels have ruled that
using domain names which include trademarks to host “fan sites” are not acceptable. Regents of the University of New Mexico
v. American Information Services, FA 94306 (Nat. Arb. Forum Apr. 26, 2000)
[no rights or legitimate interests in respect to the domain names found]; DFO,
Inc. v. Williams, D2000-0181 (WIPO May 14, 2000); Edward VanHalen v.
Morgan, D2000-1313 (WIPO Dec. 20, 2000) [no legitimate interests found]; Juventus
F.C. v. Claudio Sacco Interactive, D2001-0260 (WIPO Apr. 18, 2001) [no
legitimate interests found]; c.f.: State of Tupac Shakur v. Barranco,
AF-0348 (eResolution Oct. 23, 2000); Bruce Springsteen v. Burgar,
D2000-1532 (WIPO Jan. 25, 2001). In Nintendo
of America v. Jones, D2000-0998 (WIPO Nov. 17, 2000) the Panel observed
that the Respondent lacked legitimate interest in the domain and stated as
follows:
A complainant has a right to decide how
its mark will be used in the context of the product or products or associated
with mark. A fan-club does not exist in
a vacuum; it promotes the product for which it is named. . . . Insofar as a domain name which is identical
to a name or mark is used solely in the context of the product of the owner of
the name or the mark and the owner objects to the use, it is not legitimate. .
. . Different considerations may arise
in circumstances where the domain name is similar but not identical or where
the use of the identical words is coupled with the identification of a fan
club.”
As explained hereinabove, there is no
question that Respondent was well aware of Complainant and Complainant’s
registered trademarks prior to any use of the disputed domain names. Considering the commercial benefits which
Respondent has taken, this Arbitrator finds that Respondent intentionally
attempted to attract, for commercial gain, Internet users to her website by
creating a likelihood of confusion with Complainant’s marks as to the source,
sponsorship, affiliation of her website or location of products on her
websites. Policy ¶4(b)(iv).
Under these circumstances, this
Arbitrator finds that Respondent registered and has used the disputed domain
names in bad faith.
This decision is consistent with at least
two previous Panel decisions in cases involving the “BARBIE” trademarks. Mattel, Inc. v. Choi Yoon-Jung, FA
1147533 (Nat. Arb. Forum Aug. 26, 2002); Mattel, Inc. v. Yesbarbie.com,
FA 114754 (Nat. Arb. Forum Sept. 12, 2002) <yesbarbie.com>.
DECISION
The domain names <americanbarbieclub.com>
and <australianbarbieclub.com> shall be transferred to
Complainant.
M. KELLY TILLERY, ESQUIRE, PANELIST
Philadelphia, PA
Dated: December 26, 2002
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