National Arbitration Forum




Mattel, Inc. v. jaomadesigns

Claim Number: FA1001001303036



Complainant is Mattel, Inc. (“Complainant”), represented by George A. Pelletier, of Cantor Colburn LLP, Connecticut, USA.  Respondent is jaomadesigns (“Respondent”), represented by Craig Oghens, Canada.



The domain names at issue are <>, <>, <>, <>, and <>, registered with, Inc.



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.


Richard DiSalle is Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2010.  With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.


On January 14, 2010,, Inc. confirmed by e-mail to the National Arbitration Forum that the <>, <>, <>, <>, and <> domain names are registered with, Inc. and that the Respondent is the current registrant of the names., Inc. has verified that Respondent is bound by the, 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 January 20, 2010, a Written Notice of the Complaint, setting a deadline of January 20, 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,,,, by e-mail.


A timely Response was received and determined to be complete on February 2, 2010. Respondent did not indicate assent to participate in an electronic process; therefore Respondent’s submission was required to be sent in hard copy per the version of UDRP Rule 5 currently in effect.


Complainant’s Additional Submission was received on February 8, 2010 in compliance with Supplemental Rule 7.  Respondent timely responded to the Additional Submission.


On February 11, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.



Complainant requests that the domain names be transferred from Respondent to Complainant.



A. Complainant

The Disputed Domain Names <>, <>, <>, <>, and <> are identical or confusingly similar to Complainant’s BARBIE, FASHIONISTAS, and SO IN STYLE marks.  ICANN Rule 3(b)(ix)1); ICANN Policy ¶4(a)(i).                


Complainant owns the famous BARBIE trademark, as well as other trademarks and service marks in which the BARBIE mark is the dominant element, for dolls, toys, playthings, games and licensed products, including motions pictures, clothing, and a wide variety of other products.


Complainant has made extensive, exclusive, and continuous use of its BARBIE mark in the United States for over 50 years, since 1959, as well as in numerous other countries.  Complainant owns numerous valid and subsisting trademark and service mark registrations worldwide for its BARBIE marks.


Complainant owns a valid and subsisting trademark registration in the United States for its FASHIONISTAS mark, U.S. Certificate of Trademark Registration No. 3,702,525, issued October 27, 2009, filed March 14, 2008, and first used in commerce May 8, 2009.

Complainant owns a valid and subsisting trademark registration in the United States for its SO IN STYLE mark, U.S. Certificate of Trademark Registration No. 3,711,302, issued November 17, 2009, filed November 24, 2008, and first used in commerce June 16, 2009.


Complainant’s trademark portfolio of BARBIE and BARBIE formative marks includes over 1600 registrations and/or pending applications in over 150 jurisdictions.

Complainant has registered more than 62 Internet Domain names which comprise or include the “BARBIE” mark and are associated with Internet web sites concerning Complainant and its activities.


In light of the foregoing, Complainant’s BARBIE mark is a famous mark.  The National Arbitration Forum and the U.S. District Court of the Southern District of New York, have previously recognized BARBIE as a famous mark.


At the time of the filing of this complaint, the Disputed Domain Names <>, <>, <>, <>, and <> were registered to Jaomadesigns.  The Disputed Domain Names are confusingly similar to Complainant’s registered trademarks.


Respondent has not made a legitimate non-commercial or fair use of the Disputed Domain Names <>, <>, <>, <>, and <>.  The domain name <> hosts content that infringes Complainant’s copyright and trademark rights, and heavily features advertising for third parties with no connection to Complainant, including competitors.


Respondent registered the domain names in bad faith because the famous nature of Complainant’s [BARBIE] mark permits the inference that Respondent knew of the Complainant's famous mark when he registered the domain names.


B. Respondent

Complainant has demonstrated ownership of marks for the terms: “Barbie”,“So In Style”
“Fashionistas”. However, the Complainant has failed to demonstrate ownership pertaining to the following disputed domain names: <>, <>, <>.


The complainant has not presented any evidence to suggest that they hold the marks for the terms: “Loves Stila” and “Fashionista”. Loves Stila incorporates the generic term “Loves” and “Stila” which do not appear to be marks held by the complainant. The word “Fashionista” is a generic term and according to the Urban Dictionary-Fashionista means:  “A person devoted to fashion clothing, particularly unique or high fashion.”


The Disputed websites are operating with a legitimate First Amendment purpose of expressing views and fan-related information about Complainant products. The Websites provides information which consumers find valuable in making choices, and contains multiple pages of information that the fans find useful.  The right to inform the public is at the very heart of the First Amendment of the U.S. Constitution.


All of the disputed sites currently contain the following disclaimer on the Home page of each site: "This site is in no way affiliated, associated or in any way connected with Mattel, or any other company who appears on this site." This gives the visitor further reason not to think that the Complainant has anything whatsoever to do with the disputed sites. The disputed sites are not confusing to the Complainants sites since they are fansites, whereas Complainant site is the official site for Barbie, which anyone can easily tell. The disputed domains are also not causing confusion with the Complainant official sites, and marks because everyone who has ever seen a television commercial knows that to find Barbie, you go to  Even an average internet user does not necessarily expect to find every site containing the word BARBIE, to be an official Barbie site.


The reason why Respondent registered the domains was to create information and review fansites. The registration was in no way intended to block Complainant or to cause any disruption to the Complainant. The disputed domain names were not registered for the purpose of selling or transferring them to the complainant or any other party. On 19/09/09, Respondent was contacted by Complainant with a request for the most popular of the domains in dispute to be transferred to the complainant. At this time, the respondent stated in clear terms to the complainant that The domain is not currently available for either a sale, or transfer”. This clearly shows that we had no intentions of selling the domains to the Complainant, and removes the suggestion of a bad faith registration by the Complainant.


Complainant uses the presence of some sponsored listings on disputed sites to negate any possibility that the disputed sites could have value to fans, and also claims that the presence of sponsored listings voids the possibility of the sites being non-commercial fansites. Respondent disagrees with this, and is of the belief that to present some information about a topic, and to leave out some information would be biased, and not in conjunction with a true fansite.


C. Additional Submissions


            I. Complainant

Respondent’s web sites at <>, <>, <>, <>, and <> prominently feature advertising from which Respondent generates revenue, and are thus commercial in nature.


Respondent’s reliance on Pearl Jam, A General Partnership v. Streaming Digital Media Dot Com c/o Brain J. Spencer, to support the proposition that marks and names can co-exist with identical and confusingly similar registered trademarks in certain circumstances is irrelevant to the instant case; the Respondent in Pearl Jam was found to be engaged in non-commercial activity, whereas Respondent here has engaged in commercial activity.  NAF Claim Number FA04020000235831, March 29, 2004.  Thus the circumstances allowing for co-existence in Pearl Jam are absent from the instant proceeding.


Paragraph 4(b) of the Policy recognizes several circumstances as evidence of registration and use of a domain name in bad faith. The absence of one of the explicitly accepted elements of bad faith does not negate bad faith altogether.  Paragraph 4(b) of the policy unequivocally acknowledges that the elements outlined in the Policy do not include all possible elements of bad faith, nor are all four elements required to support a finding of bad faith registration and use.  Furthermore, Respondent has not adequately addressed its bad faith registration and use of the Disputed Domain Names under the aforesaid Sections 4(b)(ii), 4(b)(iii), and 4(b)(iv).


II. Respondent

Complainant suggests that the cited case: Homer TLC, Inc. v. GreenPeople. NAF Claim Number FA0508000550345, October 25, 2005 is distinguishable from the case at hand because “for the vast majority of the seven years that the web site in question was maintained, it was dedicated solely to providing information to the public.” We would submit that this case is a right fit in these circumstances. The Respondent in the above case was dedicated to “Providing information for the public”, which is in fact, very much what we are also trying to do with our sites as well.


Complainant makes further assertions that are an attempt to negate the value that the case - American Online, Inc. v. Ian West d/b/a Art of Living - as referenced in the Response – has on this case. It is our understanding that the Panel uses a variety of factors to arrive at a decision, and we felt that it is worth mentioning that one of the deciding factors in favor of the Respondent was that the sites were distinctively different from that of the Complainant.


Complainant makes further assertions based on a preconceived notion of our sites being Commercial in nature. We have repeatedly rebutted any idea that the sites are Commercial in nature, and have provided our reasoning for the inclusion of some sponsored listings on the sites. As expressed earlier, they are not there for Commercial benefit, as there is none.


(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 argues various legal points pursuant to the Lanham Act, specifically 15 U.S.C. §§ 1125(c) and 1114(a), as they may apply to the trademark infringement and dilution.  The instant dispute is governed by the UDRP and not the Lanham Act, so the Panel disregards these arguments and finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements.  See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006).


Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to the Lanham Act.


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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(3)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(4)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(5)   the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar


The Panel finds that Complainant has established rights in the BARBIE mark (Reg. No. 728,811 issued March 20, 1962), the FASHIONISTAS mark (Reg. No. 3,702,525 issued October 27, 2009, filed March 14, 2008), and the SO IN STYLE mark (Reg. No. 3,711,302 issued November 17, 2009, filed November 24, 2008) under Policy ¶ 4(a)(i) through its registrations of these marks with the United States Patent and Trademark Office (“USPTO”) as of their respective filing dates. 


Respondent’s <>, <>, <>, <>, and <> domain names all contain Complainant’s entire BARBIE mark and add the generic top-level domain (“gTLD”) “.com.”  In addition, the <>, <>, and <> domain names add either Complainant’s entire FASHIONISTAS mark or a significant portion of that mark by deleting the letter “s” in the mark.  Further, the <> disputed domain name also adds Complainant’s SO IN STYLE mark in its entirety.  Finally, the <> domain name adds the generic terms “loves” and “stila.”  The Panel finds that <>, <>, <>, <>, and <> domain names are confusingly similar to Complainant’s BARBIE mark, FASHIONISTA mark, and SO IN STYLE mark under Policy ¶ 4(a)(i).



Rights or Legitimate Interests


The Panel finds that Respondent’s use of the <>, <>, <>, <>, and <> domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommerical or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007).The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).


Registration and Use in Bad Faith


The Panel finds that Respondent’s use of the disputed domain name violates Policy ¶ 4(b)(ii).  See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <>, <> and <> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)); see also Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004).


Respondent’s <>, <>, <>, <>, and <> domain names all resolve to similar websites that contain Complainant’s content and hyperlinks to third-party websites, some of which directly compete with Complainant.  The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007).


Respondent receives click-through fees for the hyperlinks on the websites resolving from the <>, <>, <>, <>, and <> domain names.  The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006).


It is the opinion of the Panel that the Respondent may have presented a more persuasive case had “Barbie” not been included in its domain names.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <>, <>, <>, <>, and <> domain names be TRANSFERRED from Respondent to Complainant.




Richard DiSalle, Panelist
Dated: March 3, 2010



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