Mattel, Inc. v. Genesis, LLC c/o Quixote Enterprises
Claim Number: FA0703000945045
PARTIES
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 <barbiebitch.com>, registered with Namesdirect.
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.
Hon. Nelson A. Diaz (retired) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2007.
On March 27, 2007, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <barbiebitch.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 April 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 23, 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@barbiebitch.com by e-mail.
A timely Response, in electronic
format only, was received on April 23, 2007. Although
Respondent’s electronic submission of its Response was received in a timely
manner, Respondent has failed to submit a hard copy of the Response as required by ICANN Rule 5. In lieu of a hard copy Response, Respondent submitted an electronic media
storage device for use in making the Panel’s decision. Additionally, Respondent, in its electronic
submission, merely provided Internet links for its alleged exhibits. Due to the threat of malicious software
viruses, the National Arbitration Forum has not viewed any of the contents of
the electronic media storage device or the provided Internet links. Furthermore, Respondent has refused the
Forum’s request to correct these deficiencies.
On
April 27, 2007, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Hon. Nelson A. Diaz (retired) as Panelist. The Panel, like the NAF, has not viewed Respondent’s electronic links due
to the potential threat of malicious software viruses that may result. Notwithstanding Respondent’s deficient Response, the Panel, in
its sole discretion, has considered all materials furnished to it by the
NAF. See Gaiam, Inc. v.
Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of
having claims decided on the merits and not by default and because Complainant
has not been prejudiced in the presentation of its case by the late submission,
Respondent’s opposition documents are accepted as timely.”).
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
Complainant asserts rights in the BARBIE mark
through numerous registrations with the United States Patent and Trademark
Office (“USPTO”) (including Reg. No. 728,811 issued March 20, 1962; Reg. No.
741,208 issued November 11, 2002; Reg. No. 768,331 issued April 21, 1964).
·
Complainant contends that Respondent’s <barbiebitch.com> domain name is confusingly similar to its
well-known BARBIE mark. Complainant
contends that the addition of a generic term to Complainant’s mark along with
the generic top-level domain (“gTLD”) “.com” fails to properly distinguish
Respondent’s domain name from Complainant’s mark.
· Complainant contends that Respondent is not commonly known by the <barbiebitch.com> domain name and has not acquired trademark or service mark rights in the disputed domain name.
·
Complainant contends that Respondent is using
the <barbiebitch.com> domain name to operate a commercial website
featuring adult-oriented material and advertising the dominatrix services of
“Tampa Tiffany.” Complainant contends
Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii).
·
Complainant contends
that it contacted Respondent seeking transfer of the <barbiebitch.com> domain name to Complainant’s control. In response to Complainant’s demand,
Respondent offered to sell the disputed domain name for $7,500 to $10,000.
·
Complainant also contends that Respondent’s use
of the <barbiebitch.com> domain name to operate a commercial website
featuring adult-oriented material and advertising the dominatrix services of
“Tampa Tiffany” is evidence of bad faith registration and use under Policy ¶
4(a)(iii).
B. Respondent
·
Respondent disputes Complainant’s contention
that Respondent’s <barbiebitch.com> domain name is confusingly similar to
Complainant’s mark and contends that the addition of the term “bitch” is
sufficient to distinguish the disputed domain name from Complainant’s mark and,
in fact, is wholly unrelated to Complainant’s BARBIE mark.
·
Respondent
further contends that “BarbieBitch” is a generic term and that Complainant does
not have the ability to exclude others from using that term.
·
Respondent
contends that it is in the business of
providing clients with “marketing, promotion, and advertising services along
with website maintenance through the medium of the Internet to benefit third
parties.” Respondent contends that it is
operating this particular domain name on behalf of a third party and is in no
way responsible for the content listed on the resulting website.
· Respondent contends that Complainant has made “material falsifications” of Respondent’s use of the <barbiebitch.com> domain name and that Complainant is committing a fraud on the Panel. Respondent further contends that Complainant knew or should have known that it was unable to prove that Respondent registered and is using the <barbiebitch.com> domain name in bad faith as it is being used in connection with a bona fide offering of goods or services.
FINDINGS
Complainant has established all elements required for 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.
Complainant owns
the famous trademark BARBIE and has numerous longstanding
Likewise, the addition of a gTLD is not sufficient to
properly distinguish Respondent’s disputed domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See 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). Thus, the
Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark.
It should be noted in
passing that Respondent has not proven that the term “BarbieBitch” is a generic term and that
Complainant is unable to exclude Respondent from reflecting this term in a
domain name for purposes of Policy ¶ 4(a)(i).
Cf. Successful Money
Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar.
7, 2001) (finding that seminar and success are generic terms to which the
complainant cannot maintain exclusive rights); see also Energy Source Inc. v.
Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001)
(finding that the respondent has rights and legitimate interests in the domain
name where “Respondent has persuasively shown that the domain name is comprised
of generic and/or descriptive terms, and, in any event, is not exclusively
associated with Complainant’s business”); see also Coming Attractions, Ltd.
v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding
the respondent had the right to register the subject domain name,
comingattractions.com, based upon the generic usage of the terms “coming
attractions”).
Complainant has established this element of
its case.
There is no
evidence that Respondent is commonly known by the disputed domain name or that
it has acquired any trademark or service mark rights in the name barbiebitch or
<barbiebitch.com>.
Indeed,
Respondent admits that it registered the domain name for a third party to
use. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name). It is also clear that Complainant has not
authorized Respondent to register the disputed domain name nor otherwise to use
the trademark BARBIE. See IndyMac Bank F.S.B. v. Eshback,
FA 830934 (Nat. Arb. Forum December 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 of that it is commonly known by the disputed domain name). These
circumstances are sufficient to constitute a prima facie showing by Complainant of the 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, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23,
2000); Cassava Enters. Ltd. v. Victor Chandler Int’l Ltd., D2004-0753
(WIPO Nov. 11, 2004).
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. Although the Response is
somewhat unclear, it would appear that Respondent attempts, unsuccessfully, to argue that the present
circumstances satisfy 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.
Specifically, Respondent avers that it operates a business that provides clients with “marketing, promotion, and advertising services along with website maintenance through the medium of the Internet to benefit third parties.” Furthermore, Respondent contends that it is operating this particular domain name on behalf of a third party and is in no way responsible for the content listed on the resulting website.
Even if true, the Panel does not find that such use evidences bona fide rights or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another’s mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”). Accordingly Respondent has failed to demonstrate that it has rights or legitimate interests in the disputed domain name.
Finally, the Panel further finds that Respondent’s willingness to sell the <barbiebitch.com> domain name (Respondent suggested a price in the range of $7,500 to $10,000) is evidence of a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Complainant has established this element of its case.
Respondent is using the <barbiebitch.com> domain name to allow a third party to operate a
commercial website featuring adult-oriented material and advertising the
dominatrix services of “Tampa Tiffany.” Such
use of a confusingly similar domain name in connection with the offering of
adult-oriented material is evidence of 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) (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 Microsoft
Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s
use of the complainant’s mark to post adult-oriented photographs and to
publicize hyperlinks to additional adult-oriented websites evidenced bad faith
use and registration of the domain name).
The Panel also finds that Respondent’s offer to sell the disputed domain name to Complainant for an amount that exceeds Respondent’s out-of-pocket costs serves as additional evidence of Respondent’s bad faith registration and use pursuant to 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).
Complainant has established this element of its case.
Brief
consideration must be given to Respondent’s contention that Complainant has
made “material falsifications” of Respondent’s use of the <barbiebitch.com>
domain name and that Complainant is committing a fraud on the Panel, i.e. that
Complainant has brought this Complaint in bad faith and is attempting to engage
in reverse domain name hijacking. See Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (finding that the complainant committed reverse
domain name hijacking where it “advanced arguments that were tortuously
artificial in the extreme, reckless both as to the justification for making
those arguments and the seriousness of the overall charge against Respondent,
who was manifestly no cybersquatter.”); see
also Labrada Bodybuilding Nutrition,
Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding
that complainant engaged in reverse domain name hijacking where it used “the
Policy as a tool to simply wrest the disputed domain name in spite of its knowledge
that the Complainant was not entitled to that name and hence had no colorable
claim under the Policy”).
The
Panel finds that such assertions are without merit and that Complainant’s
filing of the instant Complaint was based on a good-faith belief that its
rights in the BARBIE mark are being damaged by registration and use of a
similar domain name. See Rusconi
Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001) (“[G]iven the
Complainant’s trade mark rights, the similarity of the Domain Name to
Complainant’s trade mark and the failure of the Respondent to respond to the
Complainant’s letters, the Panel does not believe that this complaint
constitutes an abuse of the Policy.”).
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <barbiebitch.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________
Hon.
Nelson A. Diaz (retired), Panelist
Dated: May 11, 2007
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