Mattel, Inc. v. Choi Yoon-Jung
Claim Number: FA0207000114753
PARTIES
Complainant
is Mattel, Inc., El Segundo, CA, USA
(“Complainant”) represented by William
Dunnegan, of Perkins & Dunnegan. Respondent is Choi Yoon-Jung, Seocho-Gu, Seoul, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <barbieshow.com>,
registered with DotRegistrar.com.
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 1, 2002; the Forum received a hard copy of the Complaint
on July 8, 2002.
On
July 8, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain
name <barbieshow.com> is
registered with DotRegistrar.com and that Respondent is the current registrant
of the name. DotRegistrar.com has
verified that Respondent is bound by the DotRegistrar.com 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
July 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
2002 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@barbieshow.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
August 12, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <barbieshow.com> domain
name is confusingly similar to Complainant’s BARBIE registered mark.
2. Respondent does not have any rights or
legitimate interests in the <barbieshow.com> domain name.
3. Respondent registered and uses the <barbieshow.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns numerous trademarks for
the BARBIE mark as listed on the Principal Register of the U.S. Patent and
Trademark Office (“USPTO”). More specifically, Complainant owns, inter alia,
USPTO Reg. Nos. 689,055 issued December 1, 1959 and subsequently renewed in
1979 and 2001; 728,811 issued March 20, 1962 and renewed in 1982; and, 741,208
issued November 27, 1962 and renewed in 1982.
Complainant’s BARBIE mark denotes goods
including, but not limited to: dolls, toys, clothes, accessories, plastic ware,
magazine for teenagers and children, cosmetics, jewelry, Halloween costumes,
purses and CD-ROM games and songs. Complainant also operates from the following
domain names: <barbie.com>, <barbieshop.com> and
<barbieworld.com>, among others.
Complainant’s BARBIE mark and
corresponding products have become internationally known and recognized as
affiliated with Complainant.
Respondent registered the <barbieshow.com>
domain name on January 18, 2001. Complainant’s investigation reveals that
Respondent’s domain name currently resolves to a website entitled “SHOWPOP
Figure Doll & Culture,” which advertises dolls.
DISCUSSION
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 the 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.
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:
(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; and
(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 has sufficiently demonstrated
its rights in the BARBIE mark through executing various registrations with the
USPTO and continuous use of the mark in commerce since at least May 9, 1958.
Respondent’s <barbieshow.com> domain
name is confusingly similar to Complainant’s BARBIE mark. Respondent’s domain
name deviates from Complainant’s famous mark only with the addition of “show,”
a word that bears a plausible relation to Complainant’s product. The addition
of a descriptive word, which describes Complainant’s business, to a famous mark
in the second level of a domain name fails to create a separate or distinct
mark; thus, Respondent’s domain name is rendered confusingly similar. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Parfums Christian Dior v.
1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent failed to dispute
Complainant’s allegations and contentions; thus, the Panel is permitted to make
all reasonable inferences in favor of Complainant. See 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Additionally, when Respondent’s rights
and legitimate interests in the domain name are not apparent to the Panel and
Respondent fails to corroborate its registration of the domain name with
evidence, it is presumed that Respondent lacks rights and legitimate interests
in the domain name. Respondent has effectively failed to satisfy its burden of
proving legitimate registration of the domain name in the face of Complainant’s
unrefuted evidence. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, the Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent utilizes Complainant’s famous
BARBIE mark to divert unsuspecting Internet users to its competing website.
Respondent’s unauthorized use of Complainant’s mark for its commercial benefit
is not in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). Respondent’s “SHOWPOP! Figure Doll and Culture” website
represents an opportunistic attempt to trade off the goodwill and fame
associated with Complainant’s BARBIE mark. Therefore, Respondent is not making
a legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See Vapor Blast Mfg.
Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
(finding that Respondent’s commercial use of the domain name to confuse and
divert Internet traffic is not a legitimate use of the domain name); see
also Nat’l Collegiate Athletic Ass’n
v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used
to sell Complainant’s goods without Complainant’s authority, as well as others’
goods is not bona fide use); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that “[I]t would be unconscionable to find a bona fide offering of services in
a Respondent’s operation of website using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”).
Complainant’s investigation yielded no
trademark or service mark registrations or applications reflecting Respondent’s
<barbieshow.com> domain name, or a corresponding BARBIE SHOW mark.
Because Complainant’s BARBIE mark is famous and internationally recognized, it
is presumed that Respondent is not commonly known by the subject domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); 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 that
Respondent lacks rights and legitimate interests in the domain name; thus,
Policy ¶ 4(a)(ii) has been satisfied.
As stated, Respondent uses Complainant’s
famous and highly identifiable BARBIE mark in conjunction with its commercially
motivated website that offers competing goods. Complainant’s uncontested
evidence indicates that Respondent intentionally attempted to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s BARBIE mark. Therefore, Respondent’s registration
and use of the infringing domain name constitutes bad faith pursuant to Policy
¶ 4(b)(iv). See Am. Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
bad faith where Respondent registered and used an infringing domain name to attract
users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which
contains Complainant’s Dr. Math mark, to a website run by Respondent, creating
confusion for Internet users regarding the endorsement, sponsorship, of
affiliation of the website).
Respondent’s registration and use of a
domain name that incorporates Complainant’s famous BARBIE mark in its entirety
represents opportunistic bad faith under Policy ¶ 4(a)(iii). When considering
the totality of the circumstances, it may be inferred that Respondent’s
registration of the disputed domain name was motivated by the fame associated
with Complainant’s mark, and the probable Internet traffic that would result
from a perceived affiliation with the BARBIE mark. Paragraph 4(b) is a
non-exhaustive listing of bad faith evidence. Respondent’s opportunistic bad
faith registration and use of Complainant’s mark warrants a general finding of
bad faith because the Panel will not endorse Respondent benefiting from
Complainant’s extensive efforts in establishing its BARBIE mark among the
public. See Chanel, Inc. AG v.
Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that
Respondent's registration and use of the famous CHANEL mark suggests
opportunistic bad faith); see also Singapore
Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name
‘singaporeairlines.com’ is so obviously connected with a well-known airline
that its very registration and use by someone with no connection to the airline
suggests opportunistic bad faith.
Indeed, it is hard to imagine a more blatant exercise in
‘cybersquatting.’”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly, it is Ordered that the <barbieshow.com>
domain name be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: August 26, 2002
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