Mattel, Inc. v. Sultan Sultan
Claim Number: FA1208001456760
PARTIES
Complainant is Mattel, Inc. (“Complainant”), represented by Jamie E. Platkin of Cantor Colburn LLP, Connecticut, USA. Respondent is Sultan Sultan (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbie-dress-up-games.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 August 6, 2012; the National Arbitration Forum received payment on August 6, 2012.
On August 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <barbie-dress-up-games.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 August 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@barbie-dress-up-games.com. Also on August 6, 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 August 30 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 famous 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, 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 and has marketed various products under the BARBIE mark, including: dolls, toys, playthings, games and licensed products, motion pictures, and clothing.
Complainant owns numerous registrations for its BARBIE mark with national trademark authorities around the world, including registrations with the Turkish Patent Institute (“TPI”) (e.g., Reg. No. 84,658 registered September 27, 1984).
The <barbie-dress-up-games.com> domain name is confusingly similar to Complainant’s BARBIE mark.
The <barbie-dress-up-games.com> domain name addresses a website featuring (i) online games that contain source code and images protected by copyrights owned by Complainant; (ii) images protected by copyrights owned by Complainant on the game index page; (iii) online games that include the BARBIE mark in their web addresses, game titles, descriptions and/or within the games; (iv) additional online games that do not include Complainant’s copyrighted material or trademarks; and (v) advertisements.
Respondent’s use of the <barbie-dress-up-games.com> domain name demonstrates Respondent’s intent to trade on the goodwill that Complainant has earned in its BARBIE marks by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site.
Respondent had knowledge of Complainant's rights in the BARBIE mark upon registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has numerous trademark registrations for its BARBIE mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent was aware of Complainant and the BARBIE trademark at the time it registered the at-issue domain names.
Respondent’s <barbie-dress-up-games.com> domain name references a commercial website that features Complainant’s protected intellectual property in the form of online games, images and advertisements.
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 trademark in which Complainant has rights.
Complainant‘s BARBIE mark’s registration with numerous national trademark authorities, including the TPI, establishes its rights in a mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The <barbie-dress-up-games.com> domain name is confusingly similar to Complainant’s BARBIE mark under Policy ¶ 4(a)(i). The at‑issue domain name fully incorporates Complainant’s mark and merely adds the descriptive terms “dress-up-games” and the generic top-level domain, “.com.” The addition of such descriptive terms and a top-level domain name to Complainant’s mark, as well as the introduction of superfluous hyphens, are together insufficient to distinguish the at‑issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark(s) in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of 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 showing acts conclusively.
WHOIS information for the disputed domain name identifies the domain name registrant as “Sultan Sultan” and there is no evidence that Respondent is otherwise commonly known by the at‑issue domain name. In light of the foregoing, the Panel concludes that Respondent is not commonly known by the <barbie-dress-up-games.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Furthermore, Respondent’s use of the domain name as an address for a gaming website which makes prominent use of Complainant’s mark and other intellectual property while also providing presumably revenue generating third-party advertising, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent’s use of the <barbie-dress-up-games.com> domain name in connection with a website that includes online games that infringe Complainant’s marks and other intellectual property demonstrates Respondent’s intent to commercially trade on the goodwill that Complainant has earned in its BARBIE marks by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s <barbie-dress-up-games.com> website. Using the domain name in this manner indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Finally, Respondent must have known of Complainant and Complainant's rights in the BARBIE mark upon registering the disputed domain name. This inference is compelling given the fame of the BARBIE mark, the combination of “BARBIE” and the descriptive terms “dress-up-games” in the contested domain name, and the use of Complainant’s copyrighted material and trademarks on the domain name’s associated website. Registering <barbie-dress-up-games.com> with knowledge of both Complainant and Complainant’s BARBIE trademark evidences bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbie-dress-up-games.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 7, 2012
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