Mattel, Inc. v. Norman Abel Camac Contreras
Claim Number: FA1205001442630
Complainant is Mattel, Inc. (“Complainant”), represented by Michelle P. Ciotola of Cantor Colburn LLP, Connecticut, USA. Respondent is Norman Abel Camac Contreras (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbie365.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2012; the National Arbitration Forum received payment on May 4, 2012.
On May 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <barbie365.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barbie365.com. Also on May 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 contends as follows:
Complainant owns the BARBIE trademark, as well as other trademarks and service marks in which BARBIE is the dominant element, for dolls, toys, playthings, games and licensed products, including motion pictures and clothing, and a wide variety of other products. Complainant has made extensive, exclusive, and continuous use of the BARBIE Mark in the United States for over 50 years, since 1959, as well as in numerous other countries.
The National Arbitration Forum and the U.S. District Court for the Southern District of New York have previously recognized BARBIE as a famous mark.
Complainant has registered the BARBIE mark with trademark authorities across the globe including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 782,811 registered March 20, 1962) and the Peruvian National Institute for the Defense of Competition and Protection of Intellectual Property (“NIDCPIP”) (e.g., Reg. No. 22,150 registered December 26, 2005).
Respondent’s <barbie365.com> domain name is identical and/or confusingly similar to Complainant’s BARBIE mark.
Respondent’s disputed domain name resolves to a for-profit website offering links to Complainant’s competitors and to other websites offering unauthorized BARBIE games.
Respondent is not commonly known by the disputed domain name partly due to the fact that Respondent has no relationship with Complainant, licensee or otherwise.
Respondent is attempting to commercially gain by creating a likelihood of confusion with Complainant’s BARBIE mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent’s registration and use of the disputed domain name was and is in bad faith.
Respondent knew of the existence of Complainant’s BARBIE marks and the significance of the BARBIE mark in the market as a strong and well-known mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in the BARBIE mark(s) at all times relevant to this proceeding
BARBIE is a famous mark and as such is subject to the Federal Anti-Dilution Act.
The at-issue domain name was registered on March 12, 2010.
Respondent is not known by the domain name nor authorized to use Complainant’s mark in a domain name or otherwise.
Respondent was aware of the Complainant’s BARBIE mark at the time it registered the at-issue domain name.
At the time Complainant submitted the instant Complainant, Respondent’s disputed domain name, resolved to a for-profit website offering links to Complainant’s competitors and to other websites offering unauthorized BARBIE games.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Under Policy ¶ 4(a)(i), Complainant demonstrates that it owns trademark rights in the BARBIE mark through multiple registrations thereof with the USPTO and NIDCPIP. See ITG Software Solutions, Inc. v. Hao, FA 1427294 (Nat. Arb. Forum Mar. 23, 2012) (finding that the complainant’s registrations with various trademark agencies around the world, including the USPTO and the HKIPD, are sufficient to confer rights in the mark); 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’)”).
The <barbie365.com> domain name is confusingly similar to Complainant’s BARBIE mark. Respondent’s domain name contains Complainant’s entire BARBIE mark and merely adds the number “365.” The at-issue domain name necessarily also includes a generic top-level domain, here “.com.” These alterations are insufficient to distinguish the at-issue domain name from Complainant’s trademark. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003), (a domain name was confusingly similar when two letters were added to the complainant’s mark because the changes did nothing to distinguish the domain name from the complainant’s registered trademarks); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), (finding that adding a gTLD is irrelevant when analyzing a domain name under Policy ¶ 4(a)(i)). Put another way, confusing similarity is established when a respondent adopts the dominant feature of a complainant's mark, here “BARBIE,” as the primary feature of a domain name and merely adds a generic or descriptive term thereto. See Mattel, Inc. v. Olesya Sokolova c/o Individual, NAP Claim Number F A0609000806288, November 8, 2006 ("In short, even when used in combination, the mere misspelling of Complainant's BARBIE mark and addition of a generic term are not enough to overcome the confusing similarity that exists between the <barby-models.com> and <barby-models.org> domain names and Complainant's BARBIE mark.")
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Respondent is not commonly known by the at-issue domain name in part due to the fact that Respondent has no relationship with Complainant and is not licensee or otherwise authorized to use Complainant’s BARBIE mark. Further supporting a finding that Respondent is not known by the domain name, WHOIS information identifies the domain name’s registrant as “Norman Abel Camac Contreras.” The at-issue domain name is clearly not indicative of “Norman Abel Camac Contreras.” Therefore, 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 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant evidences that Respondent’s <barbie360.com> domain name has resolved to a for-profit website offering links to Complainant’s competitors and to other websites offering unauthorized BARBIE games. Such use of the domain name does not qualify as 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and used the at-issue domain names in bad faith.
Respondent attempted to commercially gain by creating a likelihood of confusion between the at-issue domain name and Complainant’s BARBIE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. By proffering submissions that include an image of Respondent’s website, Complainant shows that Respondent’s <barbie365.com> website at one time contained links to Complainant’s competitors. The foregoing facts support a finding that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
While Policy ¶4(b) sets out specific circumstances which if found demonstrate a respondent’s bad faith registration and use of an at-issue domain name, the list is not all inclusive. By registering and using the <barbie365.com> in the manner it has, Respondent has diluted the distinctive quality of the BARBIE Marks. Such use lessens the mark’s capacity to identify Complainant's products and services and thereby violates the U.S. Anti-Dilution Act, 15 U.S.C. § 1125(c). Respondent's registration and use of <barbie365.com> also appears to have infringed the BARBIE marks in violation of 15 U.S.C. § 1114(1) and 15 U.S.C. § 1125(a). Using a domain name that infringes the mark of another and/or dilutes a famous mark additionally indicates Respondent’s bad faith pursuant to Policy ¶4(a)(iii).
Finally, Respondent was well aware of Complainant’s BARBIE marks and their significance at the time Respondent registered <barbie365.com>. Multiple tribunals have found that Complainant’s BARBIE mark is famous and well-known throughout the world. There is thus no doubt that Respondent had actual knowledge of Complainant’s rights in the BARBIE marks when it registered the disputed domain name, and no doubt that Respondent registered the <barbie365.com> domain name precisely because of its notoriety and Complainant associated goodwill therein. These circumstances further show that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
In fact, it does not appear possible to conceive of any use of the at-issue domain name by Respondent that would not constitute an infringement of Complainant's rights in the famous BARBIE mark. See PepsiCo, Inc. v. PEPSI, SRL (alk/a P.E.P.S.l) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696, October 28, 2003 (in transferring various domain names consisting of the mark PEPSI, the panel stated that it "agrees with the decision rendered in Veuve Ciiquot Ponsardin, Maison Fondeee en 1772 v. The Poiygenix Group Co., WIPO Case No. D2000-0163, in that bad faith is found where a domain name 'is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.'"). Therefore, Respondent’s registration of <barbie365.com>, in and of itself, is additional evidence of Respondent's bad faith. See Mattel, Inc. v. Ebony Barbie a/k/a Erika Diggs, NAF Claim Number FA0405000271054, June 30,2004 ("Intentionally using another's mark for one's own benefit is predatory in intent and, therefore, evidence of bad faith registration and use pursuant to Policy~ 4(a)(iii).); see also Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. WIPO D2000-0003, February 18,2003 (finding the domain name <telstra.org> registered in bad faith as a result of complainant's numerous trademark registrations, domain name registrations, and reputation for TELSTRA).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbie365.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 31, 2012
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