Mattel, Inc. v. Hoang Tuyen
Claim Number: FA0912001297994
Complainant is Mattel, Inc. (“Complainant”), represented by George
A. Pelletier, Jr., of Cantor Colburn LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gamesbarbie.net>, registered with Name.com LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2009.
On December 10, 2009, Name.Com LLC confirmed by e-mail to the National Arbitration Forum that the <gamesbarbie.net> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 December 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2010 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a global leader in producing and marketing children’s toys and games.
Complainant uses the BARBIE trademark and the official BARBIE website located at <barbie.com> domain name to market its famous line of toys and games.
Complainant owns trademark registrations for the BARBIE trademark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 728,811, issued March 20, 1962).
Respondent registered the <gamesbarbie.net> domain name on May 13, 2008.
Respondent’s domain name resolves to a commercial website offering games for purchase directly from Respondent’s as well as links to third-party websites offering games for purchase, both in competition with the business of Complainant.
Respondent’s <gamesbarbie.net> domain name is confusingly similar to Complainant’s BARBIE trademark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <gamesbarbie.net> domain name.
Respondent registered and uses the <gamesbarbie.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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) (holding that a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant federal trademark registration with the USPTO sufficiently establishes its rights in the BARBIE mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes that complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005): “Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”
Complainant asserts that Respondent’s <gamesbarbie.net> domain name is confusingly similar to Complainant’s BARBIE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s BARBIE mark in its entirety, and merely adds the descriptive term “games” and the generic top-level domain (“gTLD”) “.net.” A domain name that adds a descriptive term with an obvious relationship to Complainant’s business creates a confusing similarity between the domain and Complainant’s mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with a complainant’s registered mark “llbean” does not avoid the confusing similarity aspect of the ICANN Policy); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”). Similarly, the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark under the Policy); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its allegations, at which point the burden shifts to Respondent to prove that it possesses rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.
Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, we may presume that Respondent does not possess rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond [to the Complaint], it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
We will, however, examine the record before us to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name pursuant to the standards set out in Policy ¶ 4(c).
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Moreover, the pertinent WHOIS information for the disputed domain name identifies the registrant only as “Hoang Tuyen.” We are therefore constrained to conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s
assertion to the effect that Respondent’s domain name resolves to a website
offering games that directly compete with Complainant’s business, as well as
third-party links to websites offering games in competition with the business
of Complainant. Respondent’s use of the
disputed domain name, as alleged, does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent uses the disputed domain name to offer competing game products and to display third-party links to websites offering game products in competition with the business of Complainant. Respondent’s use of the website resolving from the disputed domain name thus disrupts Complainant’s business in the toys and gaming industry and that such disruption constitutes bad faith registration of the domain under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Am. Airlines, Inc. v.
Moreover, in the circumstances here presented, we may safely presume that Respondent receives click-through fees or similar income from the undenied activities alleged in the Complaint. Respondent has thus created a likelihood of confusion, for commercial gain, as to the possibility of Complainant’s identity as a source of or affiliation with the disputed domain name and the resolving website. This constitutes evidence that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrates that respondent’s bad faith registration and use of the domain, which is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a domain pursuant to Policy ¶ 4(b)(iv) by using the disputed domain to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <gamesbarbie.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 25, 2010
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