Mattel, Inc. v. Richard Robert
Claim
Number: FA0405000271644
Complainant is Mattel, Inc. (“Complainant”),
represented by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Richard Robert (“Respondent”),
12 Rue Chateauneuf, Nice France 06000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <caligirlbarbie.com>, registered with Namebay.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 13, 2004; the Forum received a hard copy of the Complaint
on May 14, 2004.
On
May 17, 2004, Namebay confirmed by e-mail to the Forum that the domain name <caligirlbarbie.com>
is registered with Namebay and that Respondent is the current registrant of the
name. Namebay has verified that Respondent is bound by the Namebay 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
May 20, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 9, 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@caligirlbarbie.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
June 18, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Crary 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. Respondent’s <caligirlbarbie.com>
domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or
legitimate interests in the <caligirlbarbie.com> domain name.
3. Respondent registered and used the <caligirlbarbie.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Mattel, Inc., owns numerous trademark registrations with the U.S. Patent and Trademark
Office (“USPTO”) for the BARBIE mark (e.g. U.S. Reg. No. 689,055,
registered on December 1, 1959). Complainant uses its mark in connection with
children’s dolls, toys, clothes, accessories, and related goods.
Respondent,
Richard Robert, registered the <caligirlbarbie.com> domain name on
February 13, 2004. The domain name
resolves to a website that reads “THIS DOMAIN NAME IS YOURS, BUY IT NOW.”
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 as established by its registration with
the USPTO. See Men’s Wearhouse, Inc.
v. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that 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).
While the
Complainant’s burden of proof is low under Policy ¶ 4(a)(i), Complainant still
must offer some proof other than stating that the domain name in question is
confusingly similar to Complainant’s mark.
See Desktop Media, Inc. v.
Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the
limited purposes of the domain name dispute resolution process[,] a low
threshold of proof is all that is required to meet the first element ….”); see
also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb.
Forum Jan. 18, 2002) (determining that Complainant has not proven by a
preponderance of the relevant, admissible, and credible evidence that the domain
name in question is identical to a trademark in which Complainant has rights
despite Complainant’s mark being the dominant feature of Complainant’s trade
name).
Complainant has
not made a prima facie allegation of confusingly similarity. Complainant merely alleges the following:
At the
time of the filing of this complaint, the disputed domain name was registered
to Richard Robert. The disputed domain
name is confusingly similar to and dilutive of Complainant’s registered
trademark for BARBIE within the meaning of the Anticybersquatting Consumer
Protection Act of 1999, § 1125(d). (Compl. p. 4.)
The Panel finds
that the Complaint does not address the narrow area of abusive domain name
registrations, but, rather, general trademark law, and it is outside the scope
of the UDRP. See AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of
trademark infringement "are entirely misplaced and totally inappropriate
for resolution through an ICANN proceeding. The scope of an ICANN proceeding is
extremely narrow: it only targets abusive cybersquatting, nothing else"); see
also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000)
(stating that the Policy’s administrative procedure is “intended only for the
relatively narrow class of cases of ‘abusive registrations.’” Cases where
registered domain names are subject to legitimate disputes are relegated to the
courts).
The Panel finds
that Complainant has not established Policy ¶ 4(a)(i).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
James A. Crary, Panelist
Dated:
June 30, 2004
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