Mattel, Inc. v. BDB Productions
Claim Number: FA0703000938080
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 <barbiebenson.com>, registered with Network Solutions, Inc.
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 March 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2007.
On
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@barbiebenson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <barbiebenson.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbiebenson.com> domain name.
3. Respondent registered and used the <barbiebenson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc.,
has used its BARBIE mark in connection with the marketing and sale of its toys
since at least 1962. Complainant holds
several trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the BARBIE mark (Reg. No. 728,811 issued March 20,
1962).
Respondent registered the <barbiebenson.com>
domain name on
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.
The Panel finds that Complainant’s trademark registrations with the USPTO sufficiently establish Complainant’s rights in the BARBIE mark. See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <barbiebenson.com>
domain name is confusingly similar to Complainant’s BARBIE mark under Policy ¶
4(a)(i) as the disputed domain name incorporates Complainant’s mark and merely
adds the word “benson” to the end of the mark.
The addition of such a word does not sufficiently distinguish the
disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i) as
Complainant’s well-known mark is the dominant portion of the disputed domain
name. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <barbiebenson.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <barbiebenson.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); 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). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use
Complainant’s BARBIE mark and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the <barbiebenson.com>
domain name and there is no evidence in the record to suggest that Respondent
is or has ever been known by the disputed domain name. The Panel accordingly finds that Respondent
is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum
Respondent is using the disputed domain name to redirect Internet
users to a website that features adult-oriented material. In Target Brands, Inc. v. Bealo Group S.A.,
FA 128684 (Nat. Arb. Forum Dec. 17, 2002), the panel found that use of the
<targetstore.net> domain name
to redirect Internet users to a website featuring adult-oriented material did
not equate to a bona fide offering of goods or services under Policy ¶
4(c)(i), or a legitimate noncommercial or fair use of a domain name under
Policy ¶ 4(c)(iii). See
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <barbiebenson.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii), as the disputed domain name contains adult-oriented material. Such use of Complainant’s BARBIE mark and the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
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 <barbiebenson.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 18, 2007
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