Mattel, Inc. v. Eastwind
Groups, Ltd.
Claim Number: FA0611000849009
PARTIES
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is Eastwind Groups, Ltd. (“Respondent”), represented by M.S. Greenberg, of Eastwind Groups, Ltd., Web Operations Manager, c/o Corporate Services, Ltd., 541 NW 27th Avenue, Miami, FL 33127.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbiegirl.com>, registered with Signature.
PANEL
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.
Alan L Limbury as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 20, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 21, 2006.
On November 21, 2006, Signature confirmed by e-mail to the National
Arbitration Forum that the <barbiegirl.com> domain name is
registered with Signature and that the
Respondent is the current registrant of the name. Signature
has verified that Respondent is bound by the Signature
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 November 27, 2006, the National Arbitration Forum drew to Complainant’s
attention a formal deficiency in the Complaint, in that it did not list
Respondent’s name, address and telephone number as listed in the Registrar’s
Whois database. This deficiency was
rectified by Complainant by way of amended complaint dated November 28, 2006.
On November 29, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of December 19, 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@barbiegirl.com by e-mail.
A timely Response was received and determined to be complete on December 19, 2006.
On December 22, 2006, Complainant filed a timely Additional
Submission. However, the required
payment did not accompany this submission as required by Supplemental Rule
7(b)(ii) and was not received until December 27, 2006, after the deadline for
submissions. Since the Additional Submission addressed, inter alia, two important issues raised by Respondent which
Complainant could not have been expected to anticipate (namely the genuineness
of the webpage claimed to be displayed at Respondent’s website and laches), and
in the interests of fairness, the Panelist has taken this Additional Submission
into account despite Complainant’s failure to comply with Supplemental Rule 7.
On December 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L Limbury as Panelist.
On January 4, 2007, an Additional Submission was submitted by Respondent and was determined to be deficient because, due to the holiday closure, it was not filed within five Calendar Days after the date when payment for Complainant’s Additional Submission was received by the Forum. In the interests of fairness, the Panel has chosen to consider this Additional Submission but only insofar as it addresses the issue of the genuineness of Respondent’s webpage.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1959, Complainant has been selling consumer products including toys, games and dolls under the famous trademark BARBIE.
Complainant owns the following subsisting United States trademark registrations for BARBIE: Nos. 728,811; 741,208; 768,331; 768,397; 772,298; 810,106; 814,091; 814,995; 816,601; 817,200; 1,000,125; 1,041,587; 1,300,766; 1,693,139; 1,769,285; 1,773,571; 1,775,637 and 1,795,876.
The disputed domain name is confusingly similar to Complainant’s registered trademark BARBIE.
Respondent is not commonly known by the name Barbie and has acquired no trademark or service mark rights to the domain name <barbiegirl.com>. Respondent has not made a legitimate non-commercial or fair use of the domain name barbiegirl.com. Respondent is operating a commercial hits page at its website, which provides links to sites selling BARBIE merchandise.
As to bad faith, the registration of this domain name blocks Complainant from using it for its own business. In connection with its BARBIE line of products, Complainant uses many domain names, including <barbie.com>, <barbiecollectibles.com>, and <barbiecollectiblesstore.com>.
By letter dated November 14, 2006, Complainant demanded that Respondent
transfer ownership of the domain name <barbiegirl.com> to
Complainant. Respondent did not
reply.
B. Respondent
The disputed domain name is not identical or confusingly similar to Complainant’s mark, which does not contain the term “girl”.
Respondent has a legitimate interest in the disputed domain name. “Barbie girl” comprises descriptive terms. Barbie is Australian slang for barbeque. The registration of descriptive domain names like <barbiegirl.com> ipso facto establishes Respondent’s legitimate interest. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001).
Respondent has used the disputed domain name for the bona fide offering of goods and services prior to initiation of this dispute. Respondent uses the disputed domain name in a descriptive manner, promoting barbecue products and supplies on its web site which is “The girl's guide for barbecue supplies and everything for your barbie,” including barbecue related products and supplies that relate to the dictionary definition and popular use of the term “Barbie,” such as Outdoor grills, Barbecue recipes, Barbecue accessories, Charcoal grills, Barbecue sauce and Electric grills. The sponsored links are provided by Google.
The copy of the web page attached to the Complaint is not Respondent’s web site, but a default page that Google through the DNS hosting service improperly displayed as a result of a temporary technical problem. The copy of the web page attached to the Response correctly shows Respondent’s web site as is consistently seen online.
The disputed domain name was not registered or used in bad faith. Respondent registered it because it contains the generic dictionary terms “barbie” and “girl.” Complainant has not provided any evidence that the disputed domain was registered with Complainant in mind. See Futureworld Consultancy Pty Ltd. v. Online Advice, D2003-0297 (WIPO July 18, 2003).
Respondent registered the domain name in June 2001, more than five years ago. Complainant’s long delay in notifying Respondent and in bringing this proceeding is evidence that it did not believe that Respondent had been engaging in bad faith. The Complaint should be dismissed because Complainant waited more than 5 years to file it. While laches is not a defense normally recognized under the Policy, it is evidence that Complainant did not believe its claims were truly warranted. See Rolling Stone LLC v. Robbins Carnegie Inc., FA 318048 (Nat. Arb. Forum Oct. 14, 2004).
C. Additional Submissions (insofar as the Panel is prepared to have regard to them)
Complainant
Respondent provides no evidence to support its arguments that
“[t]he copy of the web page [with links to BARBIE related products] attached by Complainant to the Complaint is not Respondent's web site, but a default page that Google through the DNS hosting service improperly displayed as a result of a temporary technical problem,” and
Respondent has used this domain name for the “bona fide offering of goods and services prior to the initiation of this dispute.”
The available evidence demonstrates that Respondent used this domain name for offering goods and services only after the filing of this proceeding. The web page exhibited to the Response, which purports to show this "bona fide" offering of goods related to barbecues, is dated November 20, 2006, the same date that the initial Complaint was filed in this case. The web page exhibited to the Complaint, however, demonstrates as of November 14, 2006 the URL <barbiegirl.com> contained links to sites selling various BARBIE related items.
In addition, the Internet Archive Way Back Machine, available at <archive.org>, provides no evidence that Respondent's website ever contained "The girl's guide for barbecue supplies and everything for your barbie" before Complainant filed this proceeding. The available archived pages of Respondent's website as it appeared on March 22, 2006, November 2, 2005, December 7, 2004, December 16, 2003, November 28, 2002 and September 22, 2001 demonstrate that throughout its existence Respondent’s website contained links, as it did on November 14, 2006, to sites selling BARBIE related products. The one exception is November 28, 2002, which contains a link to an adult website. (Apparently, Respondent tested the idea that porn would be more profitable than BARBIE, and concluded that it was not).
The defense of laches is not available under the Policy. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006); E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003); Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO July 7, 2002).
Respondent
The copy of the web page attached by Complainant to the Complaint is not Respondent’s web site, but a default parking page that Google through the DNS hosting service improperly displayed as a result of temporary and intermittent technical problems which were rectified upon notification by Complainant. These problems were rectified within three days after receipt of a notification letter from Complainant on November 14, 2006 and prior to the filing of the Complaint.
Web traffic to the domain <barbiegirl.com> is sent via the domain DNS and URL redirection to Respondent’s web site, which displays Respondent’s web page exhibited to the Response. This page presents users with links to barbecue products and supplies. Due to an error in the DNS configuration, conflicting DNS entries caused some of the traffic to the domain <barbiegirl.com> to be misdirected to the default parking page used by the third party DNS name servers.
The DNS for the domain <barbiegirl.com> is provided by a third party which has specialized technical resources to provide DNS service, as is typical for most domains. (Most web site owners use a third party service to provide their DNS service, which is required for all websites in order to be displayed on the Internet).
Currently the third party default parking page is hosted by Google which uses an automated system for displaying advertising links, over which Respondent has no control. Respondent was not aware there was a DNS conflict or that some of the traffic to the domain <barbiegirl.com> was misdirected to a default parking page until a letter was received from Complainant on November 14, 2006, when Respondent took quick action to have technical support investigate the problem and correct it. Respondent received no financial gain from the default parking page displayed by Google.
The copies of archived pages which Complainant attached to its Additional Statement are default parking pages over which Respondent has no control and for which Respondent received no financial gain. At no time did Respondent cause any adult links to be displayed as alleged by Complainant.
Furthermore, the website which Complainant used to locate archived copies of Respondent's website as it appeared on other dates,<archive.org>, is not accurate. The terms of use of the website <archive.org> specifically state "The Archive does not endorse or sponsor any content in the Collections, nor does it guarantee or warrant that the content available in the Collections is accurate, complete, noninfringing, or legally accessible in your jurisdiction." (http://www.archive.org/about/terms.php). Given the lack of accuracy acknowledged by Complainant’s source it would not be proper to consider the archived pages as accurate. The copy of the web page exhibited to the Response is Respondent’s web site which has been seen inconsistently before Respondent became aware of the DNS problem and before the Complaint was filed, and consistently since the DNS problem was corrected.
Complainant’s
allegation that Respondent modified its website after the filing of this
Complaint is false, as well as its allegation that Respondent misrepresented
the prior content of its site. As
evidence of its good faith Respondent acted quickly to correct the DNS errors
that caused the third party default parking page to be improperly displayed at
times.
FINDINGS
Complainant has established all the elements
required to entitle it to relief.
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 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;
(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.
Thanks to extensive promotion by actor Paul
Hogan and Tourism Australia, the Australian slang term “barbie,” meaning
barbeque, as in “throw another shrimp on the barbie,” has become well known in
the United States and around the world and has been recorded in Webster’s
dictionary. So used, the word is
descriptive. When used in connection
with dolls, toys and consumer merchandise, however, the word “barbie” is
distinctive of Complainant and its products, since Complainant owns the famous
trademark BARBIE and has numerous longstanding United States trademark
registrations for that mark.
The disputed domain name is not identical to
the mark, since the domain name comprises both the word “barbie” and the
additional word “girl.” The gTLD “.com”
may be disregarded as inconsequential.
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO Mar. 26, 2002); Britannia Building Society v. Britannia Fraud Prevention, D2001‑0505 (WIPO July 12, 2001); Wal-Mart Stores, Inc. v. Richard MacLeod, D2000-0662 (WIPO Sept. 21, 2000); Koninklijke Philips Electronics N.V. v. In Seo Kim, D2001‑1195 (WIPO Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., D2001-1121 (WIPO Nov. 7, 2001), and the cases cited therein. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The addition of the generic term “girl” is insufficient to distinguish Respondent’s <barbiegirl.com> domain name from Complainant’s BARBIE mark. The disputed domain name is confusingly similar to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 29, 2001); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).
Complainant has established this
element of its case.
Respondent is not commonly known by the
disputed domain name and there is no evidence that it has acquired any
trademark or service mark rights in the name barbiegirl. It is clear from
Complainant’s letter of November 14, 2006 that Complainant has not authorized
Respondent to register the disputed domain name nor otherwise to use the
trademark BARBIE.
These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000); Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, D2004-0753 (WIPO Nov. 11, 2004).
Although registration of a purely generic word as a domain name may, ipso facto, give rise to rights or a legitimate interest in the domain name, where a word is both generic in one meaning and also distinctive (and famously distinctive at that) in another, this principle does not apply. It does not apply here.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
[B]efore any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services.
Even perfunctory preparations have been
held to suffice for this purpose. See
Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eRes. Mar. 20,
2000); Lumena s-ka so.o. v. Express Ventures Ltd., FA 94375 (Nat. Arb.
Forum May 11, 2000) and Royal Bank of Canada v. Xross, AF-0133 (eRes.
Feb. 29, 2000).
Respondent has produced no concrete evidence
in support of its contention that its website has ever promoted
barbeque-related products prior to November 20, 2006, the day the Complaint was
filed and a week after Respondent received notice of this dispute by emailed
letter from Complainant’s Counsel on November 14, 2006. One would expect there to be documents
indicating when the barbeque-related website design was discussed, created and
introduced. Their absence gives rise to
the inference that there are none prior to November 14, 2006.
There is no evidence (as distinct from mere
assertion) from Respondent itself, nor is there any evidence from Respondent’s
ISP nor from Google, attesting to the technical errors which, according to
Respondent, somehow led to the display (unbeknownst to Respondent) of sponsored
advertising links to BARBIE products when Internet users entered <barbiegirl.com>
into their browsers.
On the other hand, Complainant has produced evidence from the Internet
Archive Wayback Machine showing that as long ago as September 2001 the website
reached via the disputed domain name displayed sponsored links to products
unrelated to barbeques and unrelated to Complainant and its BARBIE
products. Links to BARBIE products
appear beginning in 2004. The Wayback
Machine’s disclaimer, “The Archive does not …guarantee or warrant that the
content available in the Collections is accurate,” does not amount to an
acknowledgement of lack of accuracy, as claimed by Respondent. In the absence of any evidence of their
inaccuracy, Panel is prepared to accept the Wayback Machine’s archive pages
provided by Complainant as accurate.
Respondent submits (but has not established
by evidence) that these archived web pages were reached as a result of
temporary and intermittent technical problems and that its barbeque-related web
page demonstrates legitimacy. As
mentioned, there is no evidence that any barbeque-related page existed prior to
notification to Respondent of this dispute.
Accordingly Respondent has failed to demonstrate that it has rights or
legitimate interests in the disputed domain name and Complainant has
established this element of its case.
Complainant says Respondent’s registration of
the disputed domain name blocks Complainant from using this domain name for its
own business. This must be so in the
case of every domain name that is identical or confusingly similar to a
trademark and cannot support a finding of bad faith. That is why the Policy, paragraph 4(b)(ii),
requires proof of the additional elements of purpose and a pattern of such
conduct. Whatever might be inferred as
to Respondent’s purpose, there is no evidence of a pattern of such conduct
here.
Complainant also relies on Respondent’s
failure to reply to its Counsel’s letter of November 14, 2006. While Respondent did remove the offending
links and put up a barbeque-related web page by November 20, 2006, its failure
to respond seems inconsistent with the assertion that these links were in error
as a result of temporary and intermittent technical problems, for which it was
not responsible. Nevertheless, mere
failure to respond within 7 days hardly justifies a finding of bad faith
registration and use.
The defence of laches is not available under
the Policy. See the cases cited by
Complainant. The fact that Complainant
did not bring this Complaint until the disputed domain name had been registered
for over 5 years requires the Panel to consider very carefully whether
Complainant has discharged its burden of proving its case on the balance of
probabilities. However, the elapsed time
is not in itself a ground for dismissal.
Although Complainant’s asserted grounds for a
finding of bad faith fail, the Panel is entitled to form its own view on the
issue based upon the whole of the evidence
and the submissions of the parties provided in accordance with the Policy and
the Rules.
Complainant’s BARBIE mark is distinctive of
its products and famous, particularly in the United States, where Respondent
resides. Respondent does not claim to
have been unaware of Complainant or its mark when it registered the disputed
domain name. Within 3 months of
registration, the domain name led to a web page displaying commercial
advertising links unrelated to the descriptive meaning of the words ‘barbie’
and ‘girl.’
These facts militate against acceptance of
Respondent’s claim to have registered the disputed domain name because it
incorporates descriptive terms. Rather,
they point towards the conclusion that the domain name was chosen because of
the goodwill attaching to Complainant’s mark and the consequent web traffic
that use of the BARBIE mark in a domain name could be expected to generate.
In the absence of any evidence of use of the
disputed domain name for barbeque-related products before notice of this
dispute, the Panel does not accept the proposition that, for over 5 years,
Respondent was unaware that, as a result of temporary and intermittent
technical problems, the disputed domain name led to advertising links, some of
which promoted Complainant’s products, being links over which Respondent had no
control. The Panel accordingly concludes that Respondent itself arranged for
advertising links to be displayed on its website reached via the disputed
domain name.
Although Respondent claims to have received
no financial gain from the archived web pages, there is an inherent commercial
purpose in making one’s website available for the display of sponsored
commercial advertising links.
The Panel concludes that Respondent has used
the disputed domain name to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation or endorsement of its website or of products
on its website. Pursuant to the Policy,
paragraph 4(b)(iv), this is evidence of both bad faith registration and bad
faith use.
Complainant has established this element of
its case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbiegirl.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L Limbury, Panelist
Dated: January 12, 2007
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