Mattel, Inc. v. Jintae
Claim Number: FA0704000967824
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 <barbieclub.net>, registered with Hangang Systems, Inc. d/b/a Doregi.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 23, 2007. The Complaint was submitted in both Korean and English.
On
On May 7, 2007, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 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@barbieclub.net 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barbieclub.net> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbieclub.net> domain name.
3. Respondent registered and used the <barbieclub.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., is a toy manufacturer, whose products include toy dolls, games, and accessory items. In connection with its toy business, Complainant has registered numerous trademarks for its BARBIE mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 728,811, issued March 20, 1962. Complainant and its licensees have sold hundreds of millions of toys and consumer goods under the BARBIE mark. Complainant has continuously used its BARBIE mark in promoting toy goods and consumer products and currently maintains several domain names, including <barbie.com>, <barbiecollectibles.com>, and <barbiecollectiblesstore.com>.
Respondent registered the <barbieclub.net> 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.
Through registration with the USPTO Complainant has
established rights in the BARBIE mark satisfying Policy ¶ 4(a)(i). See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s <barbieclub.net> domain name bears a confusing similarity to
Complainant’s BARBIE mark pursuant to Policy ¶ 4(a)(i). Neither the inclusion of the generic word
“club” nor the generic top-level domain “.net” are sufficient to overcome the
fact that Respondent’s disputed domain name makes use of Complainant’s BARBIE
mark in its entirety, giving Internet users the impression that Respondent’s <barbieclub.net> domain name is
in some way associated with Complainant.
See Arthur Guinness Son & Co. (
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first set forth a prima facie case demonstrating that Respondent lacks rights or legitimate interests in the <barbieclub.net> domain name. Once Complainant has made this initial showing, the burden then shifts to Respondent to demonstrate that Respondent holds rights or legitimate interests in the disputed domain pursuant to Policy ¶ 4(a)(ii). See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also 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).
Given that Respondent has failed to respond to Complainant’s allegations, the Panel may infer that Respondent has no rights or legitimate interests in the <barbieclub.net> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will now evaluate whether any evidence in the record suggests Respondent holds rights or legitimate interests in the <barbieclub.net> domain name pursuant to Policy ¶ 4(c).
There is no evidence in the record to refute Complainant’s assertion that Respondent is not authorized to use Complainant’s BARBIE mark. Moreover, the record fails to establish Respondent is in any way associated with, affiliated with, or sponsored by Complainant. Further, nothing in Respondent’s WHOIS information suggests to the Panel that Respondent is commonly known by the <barbieclub.net> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also 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). Accordingly, the Panel concludes that the record does not permit a finding that Respondent is commonly known by the <barbieclub.net> domain name under Policy ¶ 4(c)(ii).
Respondent’s <barbieclub.net> domain name connects Internet users to a commercial website offering toy products bearing Complainant’s BARBIE mark alongside other similar products for purchase in direct competition with Complainant. Given the likelihood of confusion between the <barbieclub.net> domain name and Complainant’s BARBIE mark, the Panel finds that Respondent is attempting to commercially benefit from Internet users mistaking Respondent’s site as a bona fide offering of Complainant’s goods. Use of the <barbieclub.net> domain name by Respondent in this manner does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also National Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <barbieclub.net>
domain name amounts to bad faith registration and use under Policy ¶ 4(b)(iii)
through the intentional disruption of Complainant’s business by means of the
confusing similarity between the disputed domain name and Complainant’s BARBIE mark,
misguiding Internet users seeking Complainant and its licensees to third
parties in direct competition with Complainant.
See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
Further, the Panel
infers from the resolution of Respondent’s <barbieclub.net>
domain name to a commercial site offering products bearing Complainant’s BARBIE
mark alongside those of Complainant’s competitors that Respondent has commercially
benefited from the likelihood of confusion between Complainant’s BARBIE mark
and the disputed domain name, capitalizing on unwary Internet users misled into
believing Respondent is somehow associated with Complainant. Such use by Respondent evidences bad faith registration
and use under Policy ¶ 4(b)(iv). See
World Wrestling Fed’n Entm’t, Inc.
v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that
the respondent registered and used the <wwfauction.com> domain name in
bad faith because the name resolved to a commercial website that the
complainant’s customers were likely to confuse with the source of the
complainant’s products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by
registering the <fossilwatch.com> domain name and using it to sell
various watch brands where the respondent was not authorized to sell the
complainant’s goods).
The Panel finds 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 <barbieclub.net> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 11, 2007
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