Mattel, Inc. v. Barbieluxe incorporated
Claim Number: FA0510000581702
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is Barbieluxe incorporated (“Respondent”), NA, not available, NJ 07624.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <barbieluxe.com>, registered with BulkRegister, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2005.
On October 20, 2005, BulkRegister, LLC confirmed by e-mail to the National Arbitration Forum that the <barbieluxe.com> domain name is registered with BulkRegister, LLC and that Respondent is the current registrant of the name. BulkRegister, LLC has verified that Respondent is bound by the BulkRegister, LLC 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 October 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@barbieluxe.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <barbieluxe.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbieluxe.com> domain name.
3. Respondent registered and used the <barbieluxe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel Inc., first registered the BARBIE mark with the U.S. Patent and Trademark Office (“USPTO”) on March 20, 1962 (Reg. No. 728,811).
Respondent, Barbieluxe incorporated, registered the <barbieluxe.com> domain name on October 15, 2005. The website associated with the <barbieluxe.com> domain name provides links to third-party goods and services, including, inter alia, “Study Abroad in Ireland,” “Postgraduate Scholarships,” “Artificial Intelligence,” and “Speech Recognition.”
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 offered its trademark registration for the
BARBIE mark as evidence of its rights.
The Panel accepts this evidence to demonstrate that Complainant has
rights in the BARBIE mark pursuant to Policy ¶ 4(a)(i). 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.”); 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.”).
The Panel finds that the <barbieluxe.com> domain name is confusingly similar to Complainant’s BARBIE mark. The only difference is the addition of the “luxe” suffix, a shortened version of the word “deluxe,” which does not significantly distinguish the domain name from the mark. See 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 the complainant’s mark); Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the 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).
The Panel finds that Complainant has established Policy ¶
4(a)(i).
Respondent is wholly appropriating Complainant’s mark to
refer Internet users to third-party goods and services, including, inter
alia, “Study Abroad in Ireland,” “Postgraduate Scholarships,” “Artificial
Intelligence,” and “Speech Recognition.”
The Panel infers that Respondent is receiving click-through fees for
these referrals. Therefore, the Panel
holds that appropriating another’s mark to refer Internet traffic to unrelated
third-party products for commercial gain is not a bona fide offering of
a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Although the WHOIS information implies that Respondent
appears to be known by the <barbieluxe.com> domain name, the Panel
has not found anything in the record to corroborate this. Therefore, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb. Forum June
17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum
May 5, 2004) (finding that although “the WHOIS information for the
<yasexhoo.com> domain name states that the registrant is YASEXHOO . . .
this alone is insufficient to show that Respondent is commonly known by the
domain name.”).
The Panel finds that Complainant has established Policy ¶
4(a)(ii).
Respondent is appropriating Complainant’s mark in a
confusingly similar domain name to refer Internet traffic to unrelated
third-party services, such as “Study Abroad in Ireland,” “Postgraduate
Scholarships,” “Artificial Intelligence,” and “Speech Recognition.” The Panel infers that Respondent is getting
click-through fees for these links. The
Panel finds that this kind of appropriation for commercial gain is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).
See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003)
(finding that the respondent’s registration of an infringing domain name to
redirect Internet users to banner advertisements constituted bad faith use of
the domain name); Net2phone Inc. v.
Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice
as a result of the complainant’s widespread promotional efforts coupled with
diversion from the complainant’s site to the respondents for competing
commercial gain is sufficient evidence of bad faith registration and use).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbieluxe.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: December 1, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum