Mattel, Inc. v. David Kopsky c/o Mercedes
Claim Number: FA0703000934826
Complainant is Mattel, Inc. (“Complainant”), represented by William
Dunnegan, of Perkins & Dunnegan, 45 Rockefeller
Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <barbie-escort.com>, registered with Computer Services 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2007.
On March 13, 2007, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <barbie-escort.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a 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 March 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 2007 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@barbie-escort.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <barbie-escort.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbie-escort.com> domain name.
3. Respondent registered and used the <barbie-escort.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., owns trademark rights in the BARBIE mark, one of the world’s most recognizable and celebrated brands. Complainant uses the mark in connection with a wide array of products ranging from the iconic Barbie doll and available accessories, to wristwatches, diaries, and Halloween costumes. Complainant holds numerous registrations for the BARBIE trademark 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; Reg. No. 768331 issued April 21, 1964).
Respondent registered the <barbie-escort.com>
domain name on August 16, 2005.
Respondent’s domain name resolves to a website that contains
adult-oriented material, as well as information about an escort service
operating in
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 asserts rights in the BARBIE mark through several registrations with the USPTO. The Panel finds that Complainant has provided evidence sufficient to support Complainant’s rights in the BARBIE mark for purposes of Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration with the USPTO); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <barbie-escort.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains Complainant’s entire BARBIE mark, adding a hyphen and the generic term “escort” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a hyphen, the generic term “escort,” and the gTLD “.com” fails to sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also 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 Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interests in the <barbie-escort.com> domain
name. Complainant’s assertion constitutes a prima facie case for
purposes of the Policy, shifting the burden to Respondent to demonstrate that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel views
Respondent’s failure to submit a Response as evidence that Respondent lacks
rights or legitimate interests. Nonetheless, the Panel will evaluate the
available evidence to determine whether Respondent has rights or legitimate
interests pursuant to Policy ¶ 4(c). See 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. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also Bank of
Am. Corp. v. McCall, FA 135012 (Nat. Arb.
Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”).
Complainant contends that Respondent is using the <barbie-escort.com> domain name to
operate a website that contains adult-oriented material and information about
an escort service in
Moreover, Complainant contends that Respondent is neither commonly known by the <barbie-escort.com> domain name nor authorized or licensed to register domain names featuring the iconic BARBIE mark. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in the <barbie-escort.com> domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant submits evidence of correspondence between
itself and Respondent, where Respondent offered to sell the <barbie-escort.com> domain name
registration, for between $7,000 - $10,000, an amount far in excess of
Respondent’s out-of-pocket costs. The
Panel finds Respondent’s offer to be evidence of bad faith registration and use
under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain
name for $2,000 sufficient evidence of bad faith registration and use under
Policy ¶ 4(b)(i)); see also World Wrestling Fed’n Entm’t., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs).
Moreover, Respondent’s <barbie-escort.com>
domain name resolves to a website featuring information about an escort service
based in
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 <barbie-escort.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 17, 2007
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