Mattel, Inc. v. Guest Guest
c/o Guest
Claim Number: FA0704000956280
PARTIES
Complainant is Mattel, Inc. (“Complainant”), represented by William
Dunnegan, of Perkins & Dunnegan, 45
Rockefeller Plaza,
The domain name at issue is <barbiegirl.us>, registered with Go Daddy
Software, 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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on April 6, 2007;
the Forum received a hard copy of the Complaint on April 9, 2007.
On
On April 12, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 2, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the 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
1. Respondent’s <barbiegirl.us> domain name is confusingly similar to Complainant’s BARBIE mark.
2.
Respondent does not have any rights or
legitimate interests in the <barbiegirl.us>
domain name.
3.
Respondent registered and used the <barbiegirl.us> 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 holds numerous
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the BARBIE mark (e.g. Reg. No. 728,811 issued
Respondent registered the <barbiegirl.us> domain name on
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(f), 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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the
BARBIE mark through its multiple registrations of the mark with the USPTO. The Panel finds that Complainant’s
registration satisfies the requirements of Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
[or] have acquired secondary meaning.”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <barbiegirl.us> domain name is confusingly similar to
Complainant’s BARBIE mark. The disputed
domain name contains Complainant’s mark in its entirety. The mere addition of
the generic term “girl” is insufficient to distinguish Respondent’s <barbiegirl.us> domain name from Complainant’s BARBIE
mark. The Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See 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 Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus UDRP ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent lacks
rights and legitimate interests in the <barbiegirl.us>
domain name. Complainant’s assertion
establishes a prima facie case in support of its allegations, shifting
the burden to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Because Complainant has established
rights to the BARBIE mark and Respondent has not come forward with any evidence
showing it is the owner or beneficiary of a mark identical to the <barbiegirl.us> domain name, the
Panel finds that Complainant has satisfied Policy ¶ 4(c)(i). See
Meow Media Inc. v. Basil., FA 113280 (Nat. Arb. Forum
There is no available evidence that Respondent is commonly known by the
<barbiegirl.us> domain name. Respondent’s WHOIS
information identifies Respondent as “Guest Guest,” a name with no connection
to the disputed domain name. Consequently,
Respondent has not established rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum
Respondent is using
the <barbiegirl.us> domain name to redirect Internet users to its commercial website. Respondent is capitalizing on the fame of
Complainant’s mark in order to market its computer games containing BARBIE-like
doll figures. Presumably, Respondent is
profiting from its website. The
Panel finds that Respondent’s use of the disputed domain name does not
constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial fair use pursuant to
Policy ¶ 4(c)(iv). See
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept.
19, 2002) (finding that because the respondent is using the infringing domain
name to sell prescription drugs, the panel could infer that the respondent is
using the complainant’s mark to attract Internet users to its website for
commercial benefit); see also DLJ Long Term Inv.
Corp. v. BargainDomainNames.com, FA 104580
(Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain
name in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <barbiegirl.us> domain name to redirect Internet users to its commercial website
featuring computer games. Internet users
seeking Complainant’s genuine website or genuine information about Complainant
may instead find themselves at Respondent’s website, mistakenly believing that
the <barbiegirl.us> domain name is the
Respondent’s <barbiegirl.us> domain name is confusingly similar to Complainant’s BARBIE mark. Internet users seeking Complainant’s genuine
website may instead find themselves at Respondent’s website. Because the disputed domain name contains
Complainant’s mark in its entirety in connection with the top-level domain
“.us,” Internet users may believe that Respondent’s website is the
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief should
be GRANTED.
Accordingly, it is Ordered that the <barbiegirl.us>
domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
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