Mattel, Inc. v. Bladimir Boyiko
Claim Number: FA0910001290718
Complainant is Mattel,
Inc. (“Complainant”), represented by Bobby
A. Ghajar, of Howrey LLP,
Respondent is Bladimir
Boyiko (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwhotwheels.com>, registered with Enom, Inc. on August 14, 2001 (“Domain Name”).
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding.
Judge Ralph Yachnin
Dennis Foster
Clive Elliott (presiding) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2009.
On October 22, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwhotwheels.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 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@wwwhotwheels.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On 19 November 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin, Dennis Foster and Clive Elliott (presiding) as the Panel.
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
Complainant states that it owns various trademark registrations covering the HOT WHEELS word mark and HOT WHEELS flame logo. Complainant contends that its HOT WHEELS line of products are well-known throughout the world and have appeared in national advertisements, television, film placements, and the internet, and on a large number of products. Complainant contends that it has used or licensed the HOT WHEELS brand on a wide variety of products, ranging from clothing, magazines, health and beauty products, video games, sunglasses and helmets, bicycles, paper/plastic party goods, watches, clocks, jewelry, shoes, socks, clothing, backpacks, luggage, umbrellas, sleeping bags, bedding and home furnishings, lunch boxes, candy, gum, juices, soft drinks, to event, entertainment, and educational services.
Complainant
believes that due to the significant, long-standing sales and marketing of its
HOT WHEELS products under the HOT WHEELS mark, it has become well known in the
Complainant makes the following assertions:
1. Respondent’s <wwwhotwheels.com> domain name is confusingly similar to Complainant’s HOT WHEELS mark.
Complainant
states that it began using the trademark “Hot Wheels” in 1967 and the first
die-cast cars bearing the HOT WHEELS mark were sold in the
Complainant
asserts that it has expended substantial resources to advertise and promote the
products sold under its HOT WHEELS brand and by way of example says that during
2007, its total advertising expenditures for the HOT WHEELS brand exceeded an
estimated $350 million.
Complainant
contends that it has owned and operated the <hotwheels.com> domain continuously
since 1996 and that in 2008 it received over 35 million hits. Complainant states that it also operates a
fan website at <hotwheelscollectors.com>, which allows fans to follow
news and events related to Hot Wheels and get a sneak preview of upcoming HOT
WHEELS in their home area. Complainant says
that the website for collectors received over 1.8 million hits in 2008 and
currently has over 18,000 registered collectors.
Complainant
contends that as at October 13,
2009, the <wwwhotwheels.com> and <www.wwwhotwheels.com> domain
names resolved to a website at http://www.ownbox.com/treasure/hotwheels.html
which jumped to a website at
http://usseek.com/search/internet/hot%20wheels%20truck, http://usseek.com/search/internet/die%20cast%20cars,
http://usseek.com/search/internet/die%20cast%20trucks , and other rotating
landing webpages. Complainant says that
the resolving website features a search box incorporating various search terms
like “die cast cars,” “remote control cars,” and “toy pick up” and a list of
“Sponsored Results” related to such things as toy cars, die cast cars, die cast
collectibles, etc. is returned. Complainant
notes that when an internet user types something else into the search box,
another list of sponsored results is returned and says by way of example, that if
“Hot Wheels” is typed into the search box, the search returns a list of
sponsored results purporting to be related to “hot wheels” or “wheels.” Complainant contends that because the Domain Name
is legally identical to Complainant’s own HOT WHEELS domain and mark, an
internet user looking for Complainant’s domain and mistakenly finding the disputed
Domain would be misdirected to sponsored links rather than to Complainant’s own
site.
2. Respondent does not have any rights or legitimate interests in the <wwwhotwheels.com> domain name.
Complainant submits that Respondent is not commonly known by the name “Hot Wheels” and has not acquired any trademark or service mark rights to the Domain Name. Complainant also submits that Respondent’s
WHOIS information does not indicate any association with the name Hot Wheels,
and does not demonstrate that it has any legitimate reason for using the name
Hot Wheels.
Complainant alleges that, through its
counsel, it attempted to contact Respondent, both by letter and email on three
occasions; June 28, 2007; August 5, 2009 and September 2, 2009, requesting that
the Domain Name be transferred to Complainant, and that Respondent failed to
respond to any said contact.
Complainant believes that Respondent is using the Domain Name in a commercial manner to generate pay-per-click advertising revenues or to generate web traffic, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. Complainant also alleges that Respondent has engaged in typo squatting by taking advantage of a common typing error – omitting the period between the “www” and the second-level domain name.
Complainant contends that Respondent is using the <wwwhotwheels.com> domain name in order to divert internet users seeking Complainant’s products to an unrelated website, where Respondent attempts to get the attention of the diverted internet users through the use of a search box and terms such as “die cast” and “toys” (a direct reference to Complainant’s business – and not Respondent’s), and sponsored links, as a means of generating pay-per-click advertising revenue.
3. Respondent registered and used the <wwwhotwheels.com> domain name in bad faith.
Complainant alleges that Respondent registered and is using the Domain Name with the intention of trading on the goodwill Complainant has built up over decades of continuous use and widespread promotion of its HOT WHEELS brand, and to enhance the commercial value of his own services. Complainant also alleges that by Respondent diverting Complainant’s own customers away from its legitimate websites, Respondent is damaging and is likely to damage the reputation, business, and goodwill of Complainant.
Complainant suggests that Respondent is a serial cyber squatter, who has, with prior improper domain registration activities, established a pattern of cyber squatting. Complainant alleges that Respondent has previously been found to participate in a pattern of bad faith registration and use and quotes case law in support of this allegation.
B. Respondent
Respondent has failed to submit a Response in this proceeding.
Having considered the evidence and the submissions filed the Panel unanimously concludes that Complainant has established its case and orders the transfer of the disputed domain name.
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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 or
Confusingly Similar:
As noted above, the Domain Name was registered on August 14, 2001.
Complainant owns numerous trademark registrations for the HOT WHEELS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 843,156 issued January 30, 1968). The Panel finds without any difficulty that Complainant has established rights in the HOT WHEELS mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)). These rights predate the registration of the Domain Name.
Likewise, the Panel has no difficulty in finding that the Domain Name is confusingly similar to Complainant’s HOT WHEELS mark pursuant to Policy ¶ 4(a)(i).
Rights and Legitimate
Interests:
Complainant asserts that Respondent lacks all rights and
legitimate interests in the Domain Name. When Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests in the Domain Name
pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case,
Complainant has established a prima facie
case and Respondent has failed to submit a Response to these proceedings.
Complainant asserts that Respondent is neither commonly known by the Domain Name, nor licensed to register a domain name using the HOT WHEELS mark. Respondent’s WHOIS information identifies the registrant as “Bladimir Boyiko” and therefore lacks any defining characteristics relating it to the Domain Name. The Panel infers without affirmative evidence Respondent is commonly known by the Name and therefore that Respondent lacks all rights and legitimate interests in the Domain Name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is
using the Domain Name, which it registered on August 14, 2001, to display links
advertising third-party websites in competition with Complainant’s offering of
toy products. The Panel concludes that
Respondent is using the Domain Name to earn click-through fees, and thus also
finds that Respondent has not made a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user).
Typo squatting occurs when a respondent purposefully includes typographical errors in the mark portion of a Domain name to divert Internet users who commit those typographical errors. Complainant contends that Respondent has engaged in typo squatting by misspelling Complainant’s mark in the Domain Name. The Panel agrees with Complainant’s argument and concludes that Respondent’s apparent engagement in typo squatting is further evidence that Respondent does not have rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typo squatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Registration and Use
in Bad Faith:
Complainant presents evidence that Respondent has been the respondent in other UDRP proceedings, wherein the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases. See Travelocity.com LP v. Boyiko, FA 1245545 (Nat. Arb. Forum Mar. 16, 2009); see also Smith & Hawken, Ltd. v. Boyiko, FA 755733 (Nat. Arb. Forum Sep. 6, 2006); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Boyiko, FA 1195963 (Nat. Arb. Forum Jul. 9, 2008). The Panel is entitled to find that Respondent has therefore engaged in a pattern of bad faith registration and use under the parameters of Policy ¶ 4(b)(ii) and in this particular case does so. See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Further, the Panel finds that Respondent intended to disrupt
Complainant’s business and/or take advantage of Complainant’s goodwill
surrounding its mark by displaying third-party links to Complainant’s
competitors in the toy industry. The
Panel concludes therefore that Respondent engaged in bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”).
Complainant argues that Respondent has created a likelihood of confusion for commercial gain as to Complainant’s source and affiliation with the Domain Name and the resolving website. Given the monetary benefit that Respondent is likely to be receiving by virtue of its conduct this argument has merit and is accepted by the Panel.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwhotwheels.com> domain name be TRANSFERRED from Respondent to Complainant.
Clive Elliott (Presiding Panelist)
Judge Ralph Yachnin, Dennis Foster
Dated: December 16, 2009
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