Mattel, Inc. v. Phayze, Inc.
Claim
Number: FA0302000147303
Complainant is
Mattel, Inc., El Segundo, CA, USA (“Complainant”) represented
by William Dunnegan of Perkins & Dunnegan. Respondent is
Phayze Inc., Paris, II, FRANCE (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <barbiexxx.com>, registered with I.D.R.,
Internet Domain Registry Ltd.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 28, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On
March 5, 2003, Internet Domain Registry Ltd. confirmed by e-mail to the Forum
that the domain name <barbiexxx.com> is registered with Internet
Domain Registry Ltd. and that Respondent is the current registrant of the name.
Internet Domain Registry Ltd. verified that Respondent is bound by the Internet
Domain Registry Ltd. 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
March 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 25, 2003, 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 postmaster@barbiexxx.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 1, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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:
1. The domain name registered by Respondent,
<barbiexxx.com>, is confusingly similar to Complainant’s BARBIE mark.
2. Respondent has no rights to or legitimate
interests in the <barbiexxx.com> domain name.
3. Respondent registered and used the <barbiexxx.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Mattel, Inc., owns numerous U.S. Patent and Trademark Office (“USPTO”)
trademark registrations for the BARBIE mark, including, inter alia:
689,055 issued in 1959; 728,811 issued in 1962; 741,208 issued in 1962; and
772,298 issued in 1964. Complainant’s USPTO registrations show that the BARBIE
mark represents a variety of consumer goods, from dolls to magazines, clothes,
plastic ware, cosmetics, jewelry, purses, songs and facial tissues.
Complainant’s USPTO registration indicates that first use of the BARBIE mark
occurred in 1958.
Respondent,
Phayze, Inc., registered the <barbiexxx.com> domain name on
September 5, 2002. Complainant’s investigation of Respondent’s use of the
subject domain name reveals that <barbiexxx.com> links to various
pornographic websites, such as “Hanky-Panky-College – The Secret To Getting
FREE XXX PASSWORDS To Top Adult Paysites,” located at
<hanky-panky-college.com/party-girls.html>.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant has
established in this proceeding that it has rights in the BARBIE mark through
numerous registrations with the USPTO and by continuous use of the mark in
commerce since at least 1958. See Men’s Wearhouse, Inc. v. Brian Wick,
FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning”).
The domain name
registered by Respondent, <barbiexxx.com>, is confusingly similar
to Complainant’s BARBIE mark. The domain name registered by Respondent
incorporates Complainant’s famous mark in its entirety, and only deviates by
the addition of the symbol “XXX,” which to many denotes an adult content.
Further, the addition of the top-level domain “.com” is inconsequential when conducting
an analysis under Policy ¶ 4(a)(i). Because Respondent’s domain name attempts
to create an unauthorized likeness to Complainant’s BARBIE mark by
incorporating that mark into the domain name, it is confusingly similar. See
Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s contentions; therefore, all reasonable
inferences made by Complainant are regarded as true. Once Complainant asserts
that Respondent lacks rights and legitimate interests in the disputed domain
name, the burden shifts to Respondent to provide credible evidence that
supports its claim to the domain name. Because Respondent failed to submit a
Response that substantiates its rights in the <barbiexxx.com> domain
name, Respondent fails to advance any set of circumstances that would support
its interest in the domain name. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complaint to be deemed true); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions, which Complainant
asserts can be drawn from the facts); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests with respect to the
domain name, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name).
Uncontested
evidence reveals that Respondent is not making a legitimate non-commercial or
fair use of the disputed domain name under Policy ¶ 4(c)(iii) and that
Respondent is not making a bona fide offering of goods or services under Policy
¶ 4(c)(i). The domain name registered by Respondent, <barbiexxx.com>,
displays pornographic images and links to various explicit websites. Although
pornography can constitute a bona fide offering of services under the Policy,
in the present case Respondent tarnishes the goodwill of Complainant’s mark in
order to create Internet interest in its offerings. Such opportunistic use of a
famous mark fails to establish rights or legitimate interests in the domain
name. Additionally, Complainant’s evidence includes a printout of Respondent’s
website, where Respondent seeks to solicit memberships and collect credit card
numbers; thus, Respondent is commercially benefiting from its infringing domain
name. See Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that
infringing on another's well-known mark to provide a link to a pornographic
site is not a legitimate or fair use); see also MatchNet plc. v.
MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona
fide offering of goods or services to use a domain name for commercial gain by
attracting Internet users to third party sites offering sexually explicit and
pornographic material where such use is calculated to mislead consumers and to
tarnish Complainant’s mark).
No evidence
suggests that Respondent is commonly known by the <barbiexxx.com> domain
name or by any confusingly similar variation thereof. Complainant’s
investigation indicates that Respondent does not have any trademark or service
mark registrations that would support Respondent’s rights in the domain name.
Further, because of the fame associated with the BARBIE mark and the duration
of its use in commerce, it is presumed that Respondent cannot establish rights
or legitimate interests in a domain name using Complainant’s well known mark
under Policy ¶ 4(c)(ii). See Victoria’s
Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding
sufficient proof that Respondent was not commonly known by a domain name
confusingly similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate
any rights or legitimate interests in the <twilight-zone.net> domain name
since Complainant had been using the TWILIGHT ZONE mark since 1959).
Accordingly, the
Panel finds Policy ¶ 4(a)(ii) has been satisfied.
In determining
whether bad faith registration exists the Panel is permitted to consider the
“totality of circumstances” surrounding Respondent’s registration of <barbiexxx.com>.
Therefore, the Panel is not limited to the provisions articulated under Policy
paragraph 4(b) in finding bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (“[T]he Policy expressly recognizes that other circumstances can be
evidence that a domain name was registered and is being used in bad faith”).
Complainant’s
BARBIE mark has accumulated significant international goodwill and the BARBIE
mark and goods are synonymous with Complainant, Mattel, Inc. Respondent’s
infringing use of the domain name to link to explicit images, taken in
conjunction with the fame of Complainant’s mark, allow the Panel to infer that
Respondent intentionally registered a domain name it knew to be confusingly
similar to Complainant’s mark. Respondent’s registration of the domain name,
despite knowledge of Complainant’s rights, constitutes bad faith registration
under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that
Respondent’s registration and use of an identical and/or confusingly similar
domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous
and Respondent should have been aware of it).
Respondent used
the <barbiexxx.com> domain name in bad faith when it chose to use
the infringing domain name in connection with pornography. Respondent’s use of
the domain name tarnishes Complainant’s BARBIE mark, and exploits the goodwill
Complainant has developed in its mark over the past forty-five years. Use of
another’s well-known mark to provide links to pornographic material is evidence
of bad faith registration and use under the Policy. See MatchNet plc. v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that association of a confusingly similar domain
name with a pornographic website constitutes bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148
(WIPO Apr. 26, 2000) (finding that “this association with a pornographic web
site can itself constitute bad faith”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <barbiexxx.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 15, 2003.
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