Mattel, Inc. v. Jeissy Avila
Claim Number: FA0703000938170
Complainant is Mattel, Inc. (“Complainant”), represented by William
Dunnegan, of Perkins & Dunnegan, 45
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <barbieshot.com>, registered with Names4Ever.
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.
James A. Crary 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 March 16, 2007, Names4Ever confirmed by e-mail to the National Arbitration Forum that the <barbieshot.com> domain name is registered with Names4Ever and that Respondent is the current registrant of the name. Names4Ever has verified that Respondent is bound by the Names4Ever 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@barbieshot.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 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <barbieshot.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbieshot.com> domain name.
3. Respondent registered and used the <barbieshot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., holds numerous trademark registrations for the BARBIE mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 728,811 issued March 20, 1962).
Respondent registered the <barbieshot.com> domain name on January 4, 2006 and is using
it to advertise an escort service 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’s numerous trademark registrations for the
BARBIE mark with the USPTO sufficiently demonstrate its rights in the mark
pursuant to Policy ¶ 4(a)(i). See ESPN,
Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the
complainant demonstrated its rights in the SPORTSCENTER mark through its valid
trademark registrations with the USPTO and similar offices around the world);
see also
Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainants federal
trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were
adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Although Complainant does not
provide evidence of a trademark registration in
By merely adding the term
“shot,” Respondent has failed to distinguish the <barbieshot.com> domain name from Complainant’s BARBIE
mark. In Google Inc. v.
Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001), the panel found that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end. Moreover, in L.L. Bean,
Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000),
the panel concluded that the <shopllbean.com> domain name was confusingly
similar to the complainant’s L.L. BEAN mark because the addition of a generic
word does not avoid a finding of confusing similarity under Policy ¶
4(a)(i). In line with these previous
decisions, the Panel in this case finds that the <barbieshot.com> domain name is confusingly similar to
Complainant’s BARBIE mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first make a prima facie
case that Respondent lacks rights and legitimate interests in the <barbieshot.com> domain
name. If Complainant makes a prima face case, then the burden shifts
to Respondent to show that it does have rights or legitimate interests. See Swedish Match UK Ltd. v.
Admin, Domain, FA
873137 (Nat. Arb. Forum
Feb. 13, 2007) (finding that once a prima facie case has been
established by the complainant under Policy ¶ 4(c), the burden then shifts to
the respondent to demonstrate its rights or legitimate interests in the
disputed domain name); see also SEMCO Productions, LLC v. dmg world media (
Respondent has not submitted a Response and therefore, the
Panel presumes that it does not have rights or legitimate interests in the <barbieshot.com> domain name. See
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that
the respondent has no rights or legitimate interests in the domain name because
the respondent never submitted a response or provided the panel with evidence
to suggest otherwise); see also BIC
Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). Nevertheless, the Panel will still examine
the record to see if Respondent has rights or legitimate interests pursuant to
the factors listed in Policy ¶ 4(c).
Respondent’s website at the <barbieshot.com> domain name is promoting an escort service
in
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
By diverting Internet users seeking information on Complainant’s products under the BARBIE mark to its own website advertising an escort service, Respondent is taking advantage of the confusing similarity between the <barbieshot.com> domain name and Complainant’s mark and likely profiting from the goodwill associated with the BARBIE mark. As a result, the Panel finds that Respondent has registered and is using the <barbieshot.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the 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 AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that by operating an adult-oriented website at the <theotheraol.com> and <theotheraol.net> domain names, the respondent took advantage of the confusing similarity between the disputed domain names and the complainant’s AOL mark, which indicated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbieshot.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: April 20, 2007
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