Mattel, Inc. v. Sharone Bertolini
Claim Number: FA0211000128820
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.
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.
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 email@example.com and firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from Respondent to 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;
(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>.
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
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 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).
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).
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.
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>.
The domain names <americanbarbieclub.com> and <australianbarbieclub.com> shall be transferred to Complainant.
M. KELLY TILLERY, ESQUIRE, PANELIST
Dated: December 26, 2002
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