national arbitration forum

 

DECISION

 

Mattel, Inc. v. Barbwired Promotions

Claim Number: FA0703000948479

 

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111, USA.  Respondent is Barbwired Promotions (“Respondent”), 18 el mirador del rodeo, Marbella, Malaga 29660 ES.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbiedoll1.com>, registered with Tucows Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2007.

 

On March 28, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <barbiedoll1.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 3, 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@barbiedoll1.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 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <barbiedoll1.com> domain name is confusingly similar to Complainant’s BARBIE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <barbiedoll1.com> domain name.

 

3.      Respondent registered and used the <barbiedoll1.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Mattel, Inc., manufactures toys, games, and dolls under the BARBIE mark. Complainant utilizes numerous domain names in connection with its business, including the <barbie.com>, <barbiecollectibles.com>, and <barbiecollectiblesstore.com> domain names.

 

Complainant has held trademark registrations for the BARBIE mark with the United States Patent and Trademark Office (“USPTO”) for decades, including Reg. No. 728,811 issued March 20, 1962, and Reg. No. 741,208 issued November 27, 1962.

 

Respondent’s <barbiedoll1.com> domain name, which it registered on September 12, 2002, resolves to a website promoting “The UK’s Hottest Transsexual.”  The website at the disputed domain name also contains links to other websites with adult-oriented content.

 

In response to Complainant’s demand that Respondent transfer the <barbiedoll1.com> domain name to Complainant, Respondent asked for £2,000 in compensation.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has continuously used the BARBIE mark for decades and has registered the mark with the USPTO.  As a result, Complainant has sufficiently established rights in the BARBIE mark under Policy ¶ 4(a)(i).  See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in[,] on or in connection with the goods specified in the registration.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

 

Respondent’s <barbiedoll1.com> domain name incorporates Complainant’s registered BARBIE mark in its entirety and adds three elements: the term “doll,” which describes a product Complainant sells under the BARBIE mark, the numeral “1,” and the generic top-level domain (“gTLD”) “.com.”  None of these alterations are sufficient to distinguish the <barbiedoll1.com> domain name from Complainant’s BARBIE mark.  Thus, the Panel finds the disputed domain name to be confusingly similar to the mark under Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), it is initially up to Complainant to make out a prima facie case that Respondent lacks rights and legitimate interests in the <barbiedoll1.com> domain name, and the Complainant has set forth sufficient facts to satisfy this requirement.  Once Complainant has done so, the burden effectively shifts to Respondent to demonstrate that it does have rights or legitimate interests in the contested domain name.  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise).

 

In this case, Respondent has failed to respond, which raises a presumption that it lacks any rights and legitimate interests in the <barbiedoll1.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also 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).  Nevertheless, the Panel will examine the record to see if Respondent has rights or legitimate interests under the factors listed in Policy ¶ 4(c).

 

The WHOIS information lists the registrant of the <barbiedoll1.com> domain name as “Barbwired Promotions,” and there is no other evidence available to suggest that Respondent is commonly known by the disputed domain name.  Consequently, Respondent has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii).  See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s use of the <barbiedoll1.com> domain name also does not suggest that it has rights or legitimate interests in the disputed domain name, as Respondent is using the domain name in dispute to promote its adult-oriented business and display links to other adult-oriented websites.  In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that the respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Because similar circumstances exist in the present case, the Panel does not consider Respondent to be using the <barbiedoll1.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website 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)).

 

Moreover, Respondent has apparently offered the <barbiedoll1.com> domain name registration for sale to Complainant for £2,000.  The Panel presumes this amount is in excess of Respondent’s out-of-pocket costs and considers this offer for sale as additional evidence of Respondent’s lack of rights and legitimate interests in the <barbiedoll1.com> domain name under Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name); see also 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.”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has apparently requested £2,000 in monetary compensation in exchange for transferring the <barbiedoll1.com> domain name registration to Complainant.  The Panel infers that this price is far in excess of any out-of-pocket costs Respondent incurred in registering the domain name in dispute.  Consequently, the Panel considers Respondent’s offer to sell to demonstrate bad faith registration and use according to Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also 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 registration for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).

 

Moreover, by diverting Internet users interested in Complainant’s products under the BARBIE mark to an adult-oriented website, Respondent is attempting to take advantage of the confusing similarity between the <barbiedoll1.com> domain name and Complainant’s BARBIE mark in order to profit from the goodwill associated with the mark, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is 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 concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <barbiedoll1.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 9, 2007

 

 

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