Mattel, Inc. v. Liberty Mobile Services
Claim Number: FA0508000528205
PARTIES
Complainant
is Mattel, Inc. (“Complainant”),
represented by William Dunnegan of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Liberty Mobile
Services (“Respondent”), represented by Alfred C. Frawley of PRETIFLAHERTY, LLP, One City Center, PO Box 9546,
Portland, ME 04112-9546.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mattelmobile.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Barry
Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 1, 2005.
On
August 1, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <mattelmobile.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. 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
August 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 24,
2005 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@mattelmobile.com by e-mail.
A
timely Response was received and determined to be complete on August 24, 2005.
A
timely Additional Submission was received from Complainant on August 25, 2005.
On August 31, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Barry Schreiber as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
This Complaint
is based on the following factual and legal grounds: ICANN Rule 3(b)(ix)
a. Complainant owns the trademark for
MATTEL and has received United States Certificate of Trademark Registration No. 2,152,707 issued on
April 21, 1998. This registration is valid and subsisting
b. At
the time of the filing of this Complaint, the disputed domain name was
registered to Liberty Mobile Services.
The disputed domain name is confusingly similar to and dilutive of
Complainant’s registered trademark for MATTEL within the meaning of the Anticybersquatting
Consumer Protection Act of 1999, 15 U.S.C. § 1125(d).
c. The
disputed domain name fully incorporates Complainant's MATTEL trademark and
merely adds “mobile” after it. See Mattel,
Inc. v. Harems Internet Services, Inc., FA 262995 (Nat. Arb. Forum June 14,
2004) ("The Panel notes that the domain name fully incorporates the mark
and merely adds the descriptive term "belle.")
Rights
or Legitimate Interests
d. Respondent
is not commonly known by the name Mattel and has acquired no trademark or
service mark rights to the domain name mattelmobile.com.
e.
Respondent
has not made a legitimate non-commercial or fair use of the domain name
mattelmobile.com. The URL
“www.mattelmobile.com” is merely “parked” with Godaddy.com.
f. The registration of the <mattelmobile.com>
domain name blocks Complainant from using this domain name for its own
businesses. In connection with its
MATTEL line of products, Complainant uses many domain names, including, but not
limited to, the <mattel.com> domain name.
g. By letter and e-mail dated July 26,
2005, Complainant demanded that Respondent transfer ownership of the domain
name to Complainant.
h. Respondent and its attorneys responded
on July 28, 2005.
B. Respondent
Respondent,
Liberty Mobile Services, does not dispute that Complainant owns trademark
registrations in the identified trademark, namely MATTEL. Yet, by Complainant’s own admission, this
trademark covers only “card, board and parlor games, toys, dolls.” Respondent is preparing to enter the
business of offering wireless communications services to consumers. Respondent is not a competitor with any
business of Complainant, and is neither competing with Complainant nor is it
causing Complainant any loss that has been identified by Complainant.
The question in this proceeding is
whether Complainant has made out its required claim that the subject <mattelmobile.com>
domain name was registered and used in bad faith. Complainant must prove both that Respondent’s domain name
has been registered and is being used in bad faith. The fact that Complainant owns the mark and Respondent may be
aware of the mark, without more, does not establish bad faith
registration. See Ingersoll Rand Co.
v. Gulley, D2000-0021 (WIPO Mar. 9, 2000) (discussing that the question of
whether a trademark is “well known” or “famous” is outside the mandate of UDRP
Panels).
At
present, Respondent is not using the domain name; rather, it is simply holding
the domain name. Holding a domain name
without more does not satisfy the ICANN policy of bad faith. See Nike, Inc. v. Crystal Int’l,
D2002-0352 (WIPO July 10, 2003); see also Nestle v. Pro Fiducia Treuhand,
D2001-0916 (WIPO Oct. 10, 2001). Under
the circumstances, Complainant has not made a case for transfer of the domain
name and the request should be dismissed.
Here, Complainant has presented no
evidence that the disputed domain name was originally registered in bad faith
and there is no proof of use in bad faith.
In fact, there is no use whatsoever.
See Accor v. Accor Int’l, D2005-0336 (WIPO July 29, 2005)
(holding that registration with inactivity insufficient to show bad faith); see
also Nestle v. Pro Fiducia Treuhand, D2001-0916 (WIPO Oct. 10,
2001).
Bad faith is a necessary requirement
to be shown under ICANN policy. It must
be shown that Respondent’s domain name has been both registered and is
being used in bad faith. See Nike,
Inc. v. Crystal Int’l, D2002-0352 (WIPO July 4, 2002); World Wrestling
Fed’n Entm’t, Inc. v. Bosman, D1999-0001 (WIPO Jan. 14, 2000); see Dow
Jones v. The Hephzibah Intro-Net Project Ltd., D2000-0704 (WIPO Sept. 4,
2000).
There
is no evidence that Respondent has proposed selling, renting or otherwise
transferring the domain name to Complainant.
Respondent has, in fact, not done that.
Nor is there evidence that Respondent has registered the domain name to
prevent the owner of the mark from reflecting the mark in a corresponding
domain name. There is no showing that
Respondent has engaged in a pattern of conduct in the past in this regard. Finally, there is no evidence that
Respondent has registered the domain name for the purpose of disrupting the
business of a competitor. Respondent is
not a competitor of Complainant and there is no showing of disruption of Complainant’s
business. See generally Vision Ctr.
Nw., Inc. v. Individual, FA 96478 (Nat. Arb. Forum Mar. 14, 2001)
(stating that any use of a domain name by another party would likely mislead or
deceive the Complainant’s customers, without evidence, is not probative); Captain
Snooze Mgmt., Ltd. v. Domains4Sale, D2000-0488 (WIPO July 10, 2000).
Nor has Respondent used the domain
name to attract for commercial gain Internet users to its website by creating a
likelihood of confusion with Complainant’s mark. The subject domain name is not currently in active use, other
than as a “placeholder” page.
Therefore, there is no diversion or confusion caused by a domain name
that includes letters that correspond to Complainant’s trademark registration.
Respondent
has complied with ICANN Rules regarding providing accurate information in the
Registration Agreement and has been forthright in its registration disclosure
with ICANN. Given the fact that there
is no inaccurate contact information, that cannot support a finding of bad
faith on either.
In
short, Respondent has not violated the ICANN Policy and there has been no
showing on the part of Complainant that Respondent is, or has been, engaged in
bad faith that would require a cancellation or transfer of its registration.
The present case echoes that presented
in Mattel, Inc. v. Kim Dong Jin, FA 114462 (Nat. Arb. Forum July 19,
2002), in which Complainant unsuccessfully attempted to wrest the
<skeletor.com> domain name from the registrant. The same result should be obtained here. In Jin, the respondent was not using
the domain name, had “sketchy plans” for future use, and was found to have no
legitimate claim to the SKELETOR mark.
Nonetheless, the Panel concluded, “no facts were pled or proved which
satisfied the bad faith registration and use requirement”. Accordingly, the complaint failed, as it
should here.
Registration
and Use in Bad Faith
MATTEL
is a famous trademark, which has been used consistently since the 1940’s. The name results from a combination of the
names of its founders, Harold MATTson and ELliot Handler.
Respondent
nevertheless claims that it did not register the <mattelmobile.com>
domain name in bad faith, nor is it using the domain in bad faith. Complainant respectfully disagrees.
The
only reasonable conclusion that can be drawn concerning Respondent’s state of
mind is that Respondent knew of Complainant’s famous MATTEL trademark when
Respondent registered the <mattelmobile.com> domain name. Respondent’s bad faith, therefore, can be inferred
from its registration of a domain name incorporating Complainant’s famous
MATTEL trademark. See Dollar Fin.
Group, Inc. v. Pavon Fin. Corp., FA 95836 (Nat. Arb. Forum Nov. 29, 2000)
(“In addition, bad faith may be inferred if the domain name incorporates a
mark, which is distinctive or famous at the time the domain name is
registered.”); see also Paws, Inc. v. Dulles Nokes, FA 96204 (Nat. Arb.
Forum Jan. 8, 2001) (“In this case, the ODIE and GARFIELD marks are undeniably
world famous. Given the uniqueness and the extreme international popularity of
the marks, the Respondent knew or should have known that registering the domain
names in question would infringe upon the Complainant's goodwill.”).
Respondent
also claims that it is merely passively holding the <mattelmobile.com>
domain name, and is therefore not “using” the domain name in bad faith. However, “[p]assive holding of the domain
name with the knowledge that it infringes on a trademark of another is evidence
of bad faith.” Liberty Pub. Lim. Co.
v. Guarrera, FA 95103 (Nat. Arb. Forum Aug. 17, 2000); see also Garage
Records, Inc. v. Garage Records, FA 95071 (Nat. Arb. Forum Aug. 17, 2000)
(“Passive holding of a domain name with knowledge that it is infringing on
another’s mark, is evidence of use in bad faith.”).
Finally,
Respondent's assertion of its good faith registration is little more than a
blanket assertion that it is entering “the business of offering wireless
service communications services to consumers.”
Response of Respondent, 8/24/05.
Respondent has put forth no evidence to support its claim. In addition, Respondent has made no attempt
to explain its proposed use of MATTEL in its wireless communication
services. Bad faith can therefore be
inferred from the fact that there are no non-infringing uses of the
domain. See Via Rail Can., Inc. v.
Mean Old Man Productions, AF-0759 (eResolution Apr. 23, 2001) (“Merely
registering the domain must have been undertaken in bad faith, since the domain
cannot possibly be used in any way without violating the trademark and trade
name rights of the Complainant.”); Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (“The panel has found that it is inconceivable
that the respondent could make any active use of the disputed domain names
without creating a false impression of association with the complainant.”).
FINDINGS
The Panelist finds that Complainant
has proved each of the required three elements of Paragraph 4(a) of the
Policy, subsections (1), (2) and (3), to wit: (1) Respondent’s domain name, <mattelmobile.com>, is identical
or confusingly similar to the Complainant’s trademark; (2) Respondent has no legitimate interests with respect
to the domain name; and (3) Respondent registered the domain name in bad faith
and hence the relief sought by Complainant should be granted.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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;
(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.
The Panel finds
that Complainant’s numerous registrations for its MATTEL mark with the United
States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,152,707
issued April 21, 1998) are sufficient to establish Complainant’s rights
in the MATTEL mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant
argues that the <mattelmobile.com> domain name is confusingly
similar to its MATTEL Mark. The Panel
finds that the disputed domain name wholly incorporates Complainant’s mark and
merely adds the common term “mobile” and the generic top-level domain (gTLD)
“.com.” The Panel hence concludes that
the addition of a common term and a gTLD is insufficient to distinguish
Respondent’s domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also 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).
The Panel is fully aware that once Complainant
makes a prima facie case in support of its allegations, the burden
shifts to Respondent to show that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a) (ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent.”).
Complainant argues that Respondent is not commonly
known by the disputed domain name because its WHOIS information suggests that
Respondent is known as “Liberty Mobile Services.” The Panel finds that Respondent is not commonly known by the
disputed domain name and therefore concludes that Respondent does not have
rights or legitimate interests under Policy ¶ 4(c) (ii). See Gallup,
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
Additionally,
Complainant contends that Respondent
has made no preparations to use the disputed domain name and has thus been
passively holding the domain name. The
Panel finds that Respondent has not used the disputed domain name, and
therefore further concludes that Respondent’s passive holding of the domain name
does not constitute a bona fide offering of goods or services under Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See TMP Int’l,
Inc. v. Baker Enters., FA 204112 (Nat.
Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive
holding of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding
no rights or legitimate interests where “Respondent registered the domain name
and did nothing with it”).
The Panel has
found that the elements set in Policy ¶ 4(b) are intended to be illustrative,
rather than exclusive, and that Complainant may present evidence that does not
rely on Policy ¶ 4(b) factors to show that Respondent used and registered the
disputed domain name in bad faith. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”); see also Home
Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7,
2000) (“[J]ust because Respondent’s conduct does not fall within the
‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain
names at issue were not registered in and are not being used in bad faith.”).
Complainant
argues that Respondent had actual and constructive knowledge of Complainant’s
rights in its famous MATTEL mark at the time it registered the disputed domain
name. Complainant argues that
registering its mark with the USPTO confers constructive knowledge on
Respondent. See Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see
also Victoria’s Cyber Secret Ltd. v. V
Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of
a trademark or service mark] is constructive notice of a claim of ownership so
as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §
1072). The Panel thus concludes that
Respondent’s actual or constructive knowledge of Complainant’s rights in the
mark at the time of registration is evidence of bad faith use and registration
under Policy ¶ 4(a) (iii). The Panel has continuously asked itself
while studying the respective parties’ positions, ‘why did Respondent
specifically choose this domain name, “mattelmobile” as opposed to any other
name? For instance, “Batmobile”,
“phonemobile.” 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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Additionally,
the Panel has interpreted Respondent’s passive holding of the disputed domain
name as evidence of bad faith use and registration under Policy ¶
4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding bad faith where (1) the respondent failed to use the domain name and
(2) it is clear that the respondent registered the domain name as an
opportunistic attempt to gain from the goodwill of the complainant); see
also TV Globo Ltda. v.
Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith
where (1) the domain name in dispute is obviously connected with a well-known
mark, (2) the respondent deliberately chose a domain name which is the mark of
the largest TV operator in the world’s largest Portuguese speaking country, and
(3) the respondent failed to develop the site).
DECISION
Complainant,
having established all three elements required under the ICANN Policy, the
Panel concludes that relief sought by Complainant shall be GRANTED.
Accordingly, it is Ordered that the <mattelmobile.com>, domain name
be TRANSFERRED from Respondent to Complainant.
Barry Schreiber Panelist
Dated: September 14, 2005
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