national arbitration forum

 

DECISION

 

Mattel, Inc. v. Akhmad  Riyadi / iLmiTeknik

Claim Number: FA1205001446453

 

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by Michelle P. Ciotola of Cantor Colburn LLP, Connecticut, USA.  Respondent is Akhmad  Riyadi / iLmiTeknik (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <loopzmattel.org>, registered with eNom, Inc. (R39-LROR).

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2012; the National Arbitration Forum received payment on May 31, 2012.

 

On May 31, 2012, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <loopzmattel.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name.  eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) 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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@loopzmattel.org.  Also on June 4, 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 June 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.  Panel has issued 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.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in both MATTEL and LOOPZ and alleges that the disputed domain name is confusingly similar to its trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant makes and sells toys, games and playthings, principally by reference to its house mark, MATTEL.

2.    Complainant owns, inter alia, United States Federal Trademark Reg. No. 753,681 registered July 30, 1963 for MATTEL.

3.    Complainant also owns United States Federal Trademark Reg. No. 3,868,510 registered October 26, 2010 for LOOPZ.

4.    The disputed domain name was registered on October 22, 2010.

5.    Trademark Reg. No. 3,868,510 for LOOPZ was filed on September 10, 2009.

6.    The domain name resolves to a website which carries images of Complainant’s LOOPZ game and links to the <amazon.com> sale page for the LOOPZ game.

7.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.

 

Complainant asserts that it has rights in both the MATTEL and LOOPZ trademarks.  It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trade mark rights.  Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations for those two marks, the Panel is satisfied that it has trademark rights in both (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

That is not to say, however, that Complainant has trademark rights in the portmanteau terms LOOPZMATTEL or LOOPZ MATTEL acquired through registration.  When the disputed domain name is stripped of its non-distinctive gTLD, “.org” (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the relevant residual questions are whether the term LOOPZMATTEL is confusingly similar to either the LOOPZ trademark, or the MATTEL trademark.

 

Complainant’s submissions do not directly address those questions.  Instead, the submissions focus on Complainant’s reputation as the market leader in toys, games and playthings and on the fact that the disputed domain name wholly subsumes Complainant’s trademark(s).  Complainant relies on former UDRP decisions where the domain names in dispute were ordered to be transferred because, inter alia, those domain names combined a complainant’s well known trademark with descriptive or non-distinctive terms.  Complainant sought somehow to draw parallels between those cases and the present case.

 

Panel very briefly reiterates here the dominant view on two relevant issues influencing the assessment of confusing similarity under this part of the Policy.  First, the unqualified statement that confusing similarity exists if the disputed domain name completely incorporates the relevant trademark does not stand examination.  The well know perfumery trademark, DIOR, is wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, a completely independent dictionary meaning.  The trademark NIKE is incorporated within, for example, the hypothetical domain name <nikethamide.com>, being the name of a drug used as a respiratory stimulant.  Added matter invites a contextual comparison.  Compare the fashion trademark DIESEL with the domain name <dieselengineering.com>, or the trademark TIMBERLAND with the domain name <timberlandtravel.com>.  Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.

  

Secondly, a stream of former UDRP decisions have emphasised that the renown of a complainant’s trademark might be important for the purposes of paragraph 4(a)(i) of the Policy if unregistered common law trademark rights are claimed, however reputation has no proper place in the comparison of trademark with domain name for the purposes of confusing similarity (see, for example, the discussion in Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, D2000-0662 (WIPO Sept. 19, 2000); see also Anheuser - Busch, Incorporated v. Holix Inc., (NAF Case Number: FA0705000979961) where the panel said that “The Wal-Mart Stores “test” is not whether the domain name causes confusion as to source … but whether the mark and domain name, when directly compared, have confusing similarity.  That inquiry must take account not just of visual and aural similarities, but also the extent to which the domain name has used the trademark, the nature of the added matter, its relative prominence, and the overall impression of the two signs.”

 

Accordingly, the uneasy but appropriate question is whether the term LOOPZMATTEL is confusingly similar to either of the individual trademarks constituting that term, ignoring the influence of reputation in either trademark.  In the first place, Panel finds it more likely than not that the term LOOPZMATTEL would be perceived as two words, LOOPZ and MATTEL in accordance with ordinary linguistic rules.  Taking account of the arbitrary and distinctive character of the trademark LOOPZ and its visually significant positioning at the start of the term LOOPZMATTEL, Panel is also prepared to narrowly find that LOOPZMATTEL is confusingly similar to LOOPZ.

 

Panel finds in the result that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006);  see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

 

The publicly available WHOIS information identifies Respondent as “Akhmad  Riyadi / iLmiTeknik” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  Complainant provides evidence that the domain name resolves to a website which links to third party sites from which the LOOPZ game might be purchased.  A steady line of cases has decided that is not a bona fide offering of goods or services for the purposes of the Policy.

 

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.  In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above.  Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark.  Complainant submits evidence of screenshots of the web page corresponding with the disputed domain name.  Panel notes hyperlinks to various commercial websites offering Complainant’s goods for sale.  Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this website associated with the disputed domain name.   In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.

 

DECISION

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

 

Accordingly, it is Ordered that the <loopzmattel.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated:  July 2, 2012

 

 

 

 

 

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