Mattel, Inc. v. Domain c/o VO
Claim Number: FA0910001289791
Complainant is Mattel, Inc. ("Complainant"), represented by Bobby
Ghajar, of Howrey LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotwheels.org>, registered with Moniker.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David E. Sorkin (chair), Charles A. Kuechenmeister, and Dennis A. Foster as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2009.
On October 16, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <hotwheels.org> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2009 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@hotwheels.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin, Charles A. Kuechenmeister, and Dennis A. Foster as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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:
1. Respondent’s <hotwheels.org> domain name is identical to Complainant’s HOT WHEELS mark.
2. Respondent does not have any rights or legitimate interests in the <hotwheels.org> domain name.
3. Respondent registered and used the <hotwheels.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name <hotwheels.org> is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000).
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.
Complainant claims trademark rights in the HOT WHEELS mark,
which Complainant states is well known throughout the world, and holds numerous
registrations for various forms of the mark with the United States Patent and
Trademark Office. The disputed domain
name, <hotwheels.org>, is
identical to the mark but for the omission of the space and the addition of the
generic top-level domain suffix ".org". These differences being insufficient to
distinguish the domain name from Complainant's mark, see, e.g.,
Complainant alleges that Respondent lacks rights and legitimate interests in respect of the disputed domain name. In particular, Complainant asserts that Respondent is not commonly known by the name "Hot Wheels," and has not acquired any trademark rights therein; and that Respondent has made neither a bona fide commercial use nor a legitimate noncommercial or fair use of the domain name.
Complainant's allegations suffice to state a prima facie case that Respondent lacks rights and legitimate interests in the domain name. The burden therefore shifts to Respondent to come forward with concrete evidence demonstrating its rights and legitimate interests. See Document Techs., Inc. v. Int'l Elec. Commc'ns Inc., D2000-0270 (WIPO June 6, 2000) ("Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name."). The Panel concludes that Complainant has satisfied its burden of proof under Paragraph 4(a)(ii) of the Policy.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant asserts that Respondent registered and is using the domain name to trade on Complainant's good will and to divert Complainant's customers away from its legitimate websites, diluting and infringing Complainant's mark. In support of its assertions Complainant offers evidence of an alleged admission by Respondent that it registered the domain name "in connection with the automobiles 'Hot Wheels,'" and points to the fact that Respondent provided inaccurate or incomplete contact information in the registration record for the domain name. The Panel considers Complainant's contentions of bad faith to be plausible, and in light of Respondent's failure to respond, the Panel finds that Complainant has met is burden of proof under Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotwheels.org> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Chair
Charles A. Kuechenmeister, Panelist
Dennis A. Foster, Panelist
Dated: December 15, 2009
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