Mattel, Inc. v. Olesya Sokolova c/o Individual
Claim Number: FA0609000806288
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is Olesya Sokolova (“Respondent”), Mira 12, Riga 43234, LV.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <barby-models.com> and <barby-models.org>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2006.
On September 28, 2006, CSL Computer Services Langenbach GmbH d/b/a joker.com (“joker.com”) confirmed by e-mail to the National Arbitration Forum that the <barby-models.com> and <barby-models.org> domain names are registered with joker.com and that Respondent is the current registrant of the names. Joker.com has verified that Respondent is bound by the joker.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 September 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@barby-models.com and postmaster@barby-models.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <barby-models.com> and <barby-models.org> domain names are confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barby-models.com> or <barby-models.org> domain names.
3. Respondent registered and used the <barby-models.com> and <barby-models.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has sold and licensed an entire line of merchandise under the BARBIE mark since 1959 and has registered and consistently renewed variations of the BARBIE mark with the United States Patent and Trademark Office (“USPTO”) since 1962.
Respondent registered the <barby-models.com> and <barby-models.org> domain names with joker.com on April 25, 2003. The domain names resolve to a commercial web site that provides users access to provocative photographs of female “models,” aged eight to sixteen years.
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. 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
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.”).
Having established Complainant’s rights in the BARBIE mark, the Panel must determine whether the <barby-models.com> and <barby-models.org> domain names are confusingly similar to the BARBIE mark, and thus in violation of Policy ¶ 4(a)(i). At the outset, the Panel notes that Respondent has spelled “barbie” with a “y” instead of an “ie,” and has added a hyphen to each domain name, presumably in an attempt to avoid the instant action. However, neither of these are of any significance in overcoming the confusing similarity that exists between Respondent’s domain names and Complainant’s BARBIE mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).
Moreover, Respondent’s addition of the generic term “models” to the end of “barby” does not distinguish the <barby-models.com> and <barby-models.org> domain names from Complainant’s BARBIE 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); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
In short, even when used in combination, the mere misspelling of Complainant’s BARBIE mark and addition of a generic term are not enough to overcome the confusing similarity that exists between the <barby-models.com> and <barby-models.org> domain names and Complainant’s BARBIE mark. In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <barby-models.com> and <barby-models.org> domain names. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks legitimate rights or legitimate interests in the disputed domain names constitutes a prima facie case pursuant to the Policy.
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, despite the presumptive effect of
Respondent’s inaction, the Panel must still analyze the relevant factors under
Policy ¶ 4(c). EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as
an admission of the allegations contained in the Complaint.”). As such, the Panel will examine the record
in order to determine if Respondent has any rights or legitimate interests in
the <barby-models.com> and <barby-models.org> domain
names under Policy ¶ 4(c).
In connection with registering the
disputed domain name, Respondent simply listed Olesya Sokolova c/o Individual
as the registrant. While the
record clearly indicates that Respondent performed this mandatory and
perfunctory task, the record is void of any other attempt by Respondent to
establish that it is commonly known by either of the disputed domain
names. Indeed, given the
well-established nature of Complainant’s BARBIE mark, Respondent must put forth
strong evidence to prevail on this argument.
This has simply not been done here.
As such, Respondent has no rights or legitimate interests under Policy ¶
4(c)(ii). G.D.
Searle & Co. v. Cimock, FA 126829
(Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong
evidence that Respondent is commonly known by the disputed domain name in order
to find that Respondent has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii)).
Under Policy ¶ 4(a)(iii), Complainant need only establish one of any number of patterns of conduct that give rise to an inference of Respondent’s bad faith registration and use of Complainant’s mark. Respondent’s bad faith is evidenced by its capitalization on the similarity between the <barby-models.com> and <barby-models.org> domain names and Complainant’s BARBIE mark. Given the confusing similarity between the domain names and Complainant’s marks, it is reasonable to infer that internet users seeking information about BARBIE-related products and information would be misdirected to Respondent’s confusingly similar domain names. These circumstances indicate that Respondent sought to benefit commercially from Complainant’s well-established goodwill. This is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names. G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barby-models.com> and < barby-models.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 8, 2006
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