Mattel, Inc. v. Jennifer Post
Claim Number: FA0603000655013
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is Jennifer Post (“Respondent”), represented by James A. Rocco III, of Law Offices of James A. Rocco, III, The Bellevue, Suite 1140, 200 South Broad Street, Philadelphia, PA 19102.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <barbiecollectibles.net> and <barbiecollectibles.org>, registered with Network Solutions, Inc.
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 electronically on March 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2006.
On March 10, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <barbiecollectibles.net> and <barbiecollectibles.org> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 2006 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@barbiecollectibles.net and postmaster@barbiecollectibles.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barbiecollectibles.net> and <barbiecollectibles.org> domain names are confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbiecollectibles.net> and <barbiecollectibles.org> domain names.
3. Respondent registered and used the <barbiecollectibles.net> and <barbiecollectibles.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., is a toy manufacturer. Complainant manufactures and sells a line of toys under the BARBIE mark and holds multiple registrations of the BARBIE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 728,811 issued March 20, 1962; Reg. No. 741,208 issued November 27, 1962) in connection with its toy sales. Complainant also maintains websites under the <barbie.com>, <barbiecollectibles.com> and <barbiecollectiblesstore.com> domain names in connection with its business.
Respondent registered the <barbiecollectibles.net> and <barbiecollectibles.org> domain names on November 3, 2000. Respondent originally used the disputed domain names to direct Internet users to a commercial website entitled “Welcome to Jenn’s Collectibles.” The domain names no longer resolve to this website, and they currently direct Internet users to a website with no active content.
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 established rights in the BARBIE mark, pursuant to Policy ¶ 4(a)(i), through registration of the mark with the USPTO. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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’s <barbiecollectibles.net> and <barbiecollectibles.org> domain names are confusingly similar to Complainant’s BARBIE mark because they incorporate Complainant’s mark along with descriptive terms and the top-level domains “.net” and “.org.” The Panel finds that the mere addition of a descriptive term to Complainant’s registered mark does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Additionally, because all domain names require a top-level domain, the addition of a top-level domain to Complainant’s mark fails to distinguish Respondent’s domain name from the mark. See 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <barbiecollectibles.net> and <barbiecollectibles.org> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, Complainant’s assertions are unopposed, and the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s <barbiecollectibles.net>
and <barbiecollectibles.org>
domain names are confusingly similar to Complainant’s BARBIE mark, and were
originally used to direct Internet users to Respondent’s commercial
website. Respondent’s use of
Complainant’s BARBIE mark in its domain names suggests a relationship between
Complainant and Respondent. Complainant
asserts that no such relationship exists.
Respondent’s use of the infringing domain names to direct Internet users
to an unaffiliated commercial website cannot be deemed a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000)
(finding that Respondent does not have a legitimate interest in using the domain
names <caterpillarparts.com> and <caterpillarspares.com> to suggest
a connection or relationship, which does not exist, with the Complainant's mark
CATERPILLAR); see
also 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).”).
Complainant asserts that Respondent is not commonly known by the disputed domain names and has acquired no trademark rights in them. Respondent has not offered affirmative proof that Respondent is commonly known by either the <barbiecollectibles.net> or <barbiecollectibles.org> domain name, and the WHOIS database entry for both of the disputed domain names lists Respondent as “Jennifer Post”. The Panel finds that Respondent has no rights or legitimate interests in the domain names under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also 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”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidence indicates that Respondent has registered and used the domain name in bad faith pursuant to Policy 4 ¶ (b)(iv). Respondent registered the <barbiecollectibles.net> and <barbiecollectibles.org> domain names, which are confusingly similar to Complainant’s BARBIE mark, in order to divert Internet traffic to its own commercial website. The Panel finds that Respondent registered the disputed domain names with the intention of gaining commercially by attracting Internet users who mistakenly believe that Respondent’s website is affiliated with or sponsored by Complainant. Respondent has not responded to the Complaint with any evidence that it registered the domain names in good faith. See Dr. Karl Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("There may be circumstances where [the respondent’s registration of a domain name that uses the complainant’s mark] could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith."); see also 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).
The Panel finds that Respondent had constructive notice of Complainant’s rights in the BARBIE mark through Complainant’s registration of the mark with the USPTO. 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 because both parties are in the United States, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). Despite having constructive notice of Complainant’s rights in the BARBIE mark, Respondent registered the <barbiecollectibles.net> and <barbiecollectibles.org> domain names. Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbiecollectibles.net> and <barbiecollectibles.org> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 26, 2006
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