Mattel, Inc. v. Daniel Ierulli
Claim Number: FA0312000220025
Complainant is Mattel, Inc., El Segundo, CA
(“Complainant”) represented by William
Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Daniel Ierulli,
Calle22 2p-18, Urb. Mirador De Bairoa, Caguas, Puerto Rico (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <barbiefanclub.com>,
<barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com>,
registered with Namesecure.Com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 15, 2003; the Forum received a hard copy of the
Complaint on December 16, 2003.
On
December 19, 2003, Namesecure.Com confirmed by e-mail to the Forum that the
domain names <barbiefanclub.com>,
<barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> are
registered with Namesecure.Com and that Respondent is the current registrant of
the names. Namesecure.Com has verified that Respondent is bound by the Namesecure.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
December 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 8, 2004 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@barbiefanclub.com,
postmaster@barbiefetish.com, postmaster@barbiefanatic.com,
postmaster@barbieorgy.com, postmaster@goodbarbie.com,
postmaster@coedbarbie.com, postmaster@lesbianbarbie.com, postmaster@skiboatbarbie.com,
postmaster@forkliftbarbie.com, postmaster@iwantabarbie.com,
postmaster@iwantbarbie.com, postmaster@politicallycorrectbarbie.com,
postmaster@wewantbarbie.com, and postmaster@whitesupremistbarbie.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
January 15, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barbiefanclub.com>, <barbiefetish.com>,
<barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain
names are confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or
legitimate interests in the <barbiefanclub.com>,
<barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain
names.
3. Respondent registered and used the <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered its BARBIE mark with the United States Patent and Trademark Office
(“USPTO”) on December 1, 1959 (Reg. No. 689055) and has received numerous U.S.
Certificates of Trademark Registrations (e.g. Reg. Nos. 728811, 741208, 741649,
768331). Complainant has used its
BARBIE mark in connection with its famous dolls, clothes, toys, among other
things, since May 9, 1958.
Respondent
registered each disputed domain name on February 25, 2003. Respondent uses the names to host a domain
name registry service website.
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
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established rights in the BARBIE mark through registration with the USPTO and
extensive use in commerce since 1958. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The disputed
domain names incorporate Complainant’s BARBIE mark in its entirety, and the
names merely add generic or descriptive terms used in connection with
Complainant’s famous mark. See Arthur Guinness Son & Co. Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or
term); see also AXA China Region Ltd. v.
KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that generic nouns
can rarely be relied upon to differentiate the mark if the other elements of
the domain name comprise a mark or marks in which another party has rights); see also Am. Online, Inc. v. Anytime Online
Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that
Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the subject domain name incorporates the VIAGRA mark in its entirety,
and deviates only by the addition of the word “bomb,” the domain name is
rendered confusingly similar to Complainant’s mark).
Therefore,
Policy ¶ 4(a)(i) is established.
The fact that
Respondent has not asserted any rights or legitimate interests in the domain
names is evidence that Respondent lacks rights and legitimate interests in the
names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Am. Online, Inc. v. AOL
Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where Respondent fails to respond).
Additionally,
there is no evidence that Respondent is commonly known by the disputed domain
names pursuant to Policy ¶ 4(c)(ii) and the WHOIS registration information
fails to imply that Respondent is commonly known by the names. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating,
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also 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).
Respondent is
not using the disputed domain names for a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii), because it is diverting unsuspecting Internet users, who
are attempting to find Complainant, to a site wholly unrelated to Complainant’s
mark. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or services
or any other fair use); see also Am. Online, Inc. v. Tencent Communications
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of
Complainant’s mark “as a portal to suck surfers into a site sponsored by
Respondent hardly seems legitimate”).
Therefore,
Policy ¶ 4(a)(ii) is established.
The
notoriety of Complainant’s BARBIE mark is sufficient to allow the inference
that Respondent reasonably should have been aware of Complainant’s rights in
the mark. Therefore, Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)
(finding that the fame of the YAHOO! mark negated any plausible explanation for
Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse").
Furthermore, Respondent
has advanced no evidence to show that it has registered any of the disputed
domain names in good faith. See Kraft Foods v. Wide, D2000-0911
(WIPO Sept. 23, 2000) (“Respondent chose to register a well known mark to which
he has no connections or rights indicates that he was in bad faith when
registering the domain name at issue”); see
also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The
Respondent intentionally registered a domain name which uses the Complainant’s
name. There is no reasonable
possibility that the name karlalbrecht.com was selected at random. There may be circumstances where such a
registration could be done in good faith, but absent such evidence, the Panel
can only conclude that the registration was done in bad faith”).
Moreover, it is
likely that Respondent is profiting from its domain registry service, which is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov.
21, 2002) (finding that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Kahn, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Therefore,
Policy ¶ 4(a)(iii) is established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <barbiefanclub.com>,
<barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 29, 2004
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