Mattel, Inc. v. D Larsen
Claim Number: FA0705000985143
Complainant is Mattel, Inc. (“Complainant”), represented by Megan
L. Martin, of Perkins & Dunnegan, 45 Rockefeller
Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <3dhotwheels.com>, registered with Tucows Inc.
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 May 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2007.
On
On May 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 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@3dhotwheels.com 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <3dhotwheels.com> domain name is confusingly similar to Complainant’s HOT WHEELS mark.
2. Respondent does not have any rights or legitimate interests in the <3dhotwheels.com> domain name.
3. Respondent registered and used the <3dhotwheels.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., manufacturers consumer toy products, including a variety of
toys, dolls, and games. As part of its product offerings, Complainant
maintains the HOT WHEELS line, a series of minature cars, toy vehicles, models,
and other related items. Complainant has
registered numerous trademarks with the United States Patent and Trademark
Office (“USPTO”) in conjunction with its HOT WHEELS products, including the HOT
WHEELS mark (Reg No. 843,156 issued Jan. 30, 1988). Complainant and its licensees have sold hundreds
of millions of toys under the HOT WHEELS mark.
Complainant also maintains several websites for promotion and
advertisement of its HOT WHEELS toys, including <hotwheels.com> and
<hotwheelscollectors.com>.
Respondent registered the <3dhotwheels.com> domain name on July 8, 2002. Respondent’s website currently resolves to a commercial site advertising auction listings for Complainant’s HOT WHEELS toys and other collectible toy cars from different manufacturers.
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.
The Panel recognizes registration with a trademark authority
as sufficient evidence to establish rights in a mark. Complainant has demonstrated rights in the
HOT WHEELS mark via registration with the USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
The Panel finds that Respondent’s <3dhotwheels.com> domain name bears a confusing similarity to
Complainant’s HOT WHEELS mark as it incorporates Complainant’s mark in its
entirety and the addition of the generic term “3d” fails to adequately
distinguish the disputed domain name from Complainant’s HOT WHEELS mark. See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son &
Co. (
Therefore, the Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(i).
Before Respondent must offer evidence of rights or
legitimate interests in the disputed domain name, the Complainant must first
set forth a prima facie case
demonstrating Respondent’s lack thereof.
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 Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Seeing that Complainant has satisfied its initial burden, the Panel now
examines whether Respondent has put forth any evidence in support of its rights
or legitimate interests in the <3dhotwheels.com>
domain name.
Complainant
asserts that Respondent is not authorized to use Complainant’s HOT WHEELS mark
and that Respondent is in no way connected with Complainant’s toy
business. Additionally, Respondent’s
WHOIS record fails to give any indication Respondent is commonly known by the <3dhotwheels.com> domain
name. The Panel finds Respondent is not
commonly known by the <3dhotweels.com>
domain name as outlined in Policy ¶ 4(c)(ii) and,
therefore, holds no rights or legitimate interests in the disputed domain
name. See Gallup, Inc. v. Amish Country
Store, FA
96209 (Nat. Arb. Forum
As
indicated by the evidence in the record, Respondent’s <3dhotwheels.com> domain name resolves to a website
advertising Complainant’s HOT WHEELS toys for sale via auction as well featuring
the products of Complainant’s competitors.
Use of the disputed domain name by Respondent in this manner is neither
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 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 Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
Therefore, the Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s <3dhotwheels.com> domain name amounts to bad faith registration and use under Policy ¶ 4(b)(iii) through the intentional disruption of Complainant’s business by using the confusing similarity between the disputed domain name and Complainant’s HOT WHEELS mark to divert Internet users to competing commercial sites offering Complainant’s products and those of its competitors. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Moreover, the Panel infers from the use of the <3dhotwheels.com> domain name to resolve to commercial websites selling Complainant’s products without authorization and alongside those of Complainant’s competitors, that Respondent is attempting to capitalize on the likelihood of confusion between the disputed domain name and Complainant’s HOT WHEELS mark for Respondent’s own commercial gain. Respondent’s use of the confusingly similar <3dhotweels.com> domain name for Respondent’s own commercial gain evidences bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Therefore, the Panel concludes that Complainant has met the requirements of 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 <3dhotwheels.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 18, 2007
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