Mattel, Inc. v.
CyberGameZone c/o Adam K
Claim Number: FA0705000985158
PARTIES
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 <hotwheels4u.com>, registered with Dotster.
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.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
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 May 15, 2007, Dotster confirmed by e-mail to the National
Arbitration Forum that the <hotwheels4u.com> domain name is
registered with Dotster and that the
Respondent is the current registrant of the name. Dotster
has verified that Respondent is bound by the Dotster
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 May 21, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 11, 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@hotwheels4u.com by e-mail.
A timely Response was received on June
11, 2007. The Response was deemed
deficient under ICANN Rule 5 and the National Arbitration Forum’s Supplemental
Rule 5 as it was received in electronic format only.
On June 15, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
Procedural Issue
Although Respondent’s electronic
submission was received in a timely manner, Respondent failed to submit a hard
copy as required by ICANN Rule 5 and the National Arbitration Forum’s
Supplemental Rule 5. Therefore, the
Panel, in its discretion, has considered the Response. See Telstra Corp. v. Chu,
D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the
lateness of the response is solely in the discretion of the panelist); see
also Bd. of Governors of the
Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a
panel may consider a response which was one day late, and received before a
panelist was appointed and any consideration made); see also 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, Mattel, Inc., makes the following assertions:
1. Respondent’s <hotwheels4u.com> domain name is confusingly similar to Complainant’s HOT WHEELS mark.
2. Respondent does not have any rights or legitimate interests in the <hotwheels4u.com> domain name.
3. Respondent registered and used the <hotwheels4u.com> domain name in bad faith.
B. Respondent
In his e-mail Response, Respondent,
CyberGameZone c/o Adam K, contends that he is using the <hotwheels4u.com>
domain name to operate a Collector’s website and to legitimately resell
products purchased from Complainant.
FINDINGS
Complainant owns the trademark for HOT WHEELS and has received U.S. Certificate of Trademark Registration Nos. 843,156 for scale model toys; 884,563 for toy miniature automobiles and accessories therefor; and 1,810,905 for toy vehicles and race sets.
The disputed domain name, <hotwheels4u.com>, fully incorporates Complainant's HOT WHEELS trademark and merely adds "4u" after it.
By letter and e-mail dated
January 22, 2007, Complainant demanded that Respondent transfer ownership of
the domain name to Complainant.
Respondent replied by e-mail the same day and offered to sell the domain
name to Complainant.
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 has rights in the HOT WHEELS mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 843,156 issued January 30, 1988). This trademark registration is sufficient to give Complainant rights in the HOT WHEELS mark for the purposes of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <hotwheels4u.com> domain name is confusingly similar to Complainant’s HOT WHEELS mark as the disputed domain name contains Complainant’s mark in its entirety with the addition of the numeral “4” and letter “u,” as well as the generic top-level domain (“gTLD”) “.com.” The addition of a number and letter, which are phonetically equivalent to the phrase “for you,” do not sufficiently distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). Also, the addition of a gTLD to Complainant’s mark is not relevant under Policy ¶ 4(a)(i) as every domain name must have a top-level domain attached. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Under Policy ¶ 4(c)(ii), Respondent must show that it was commonly known by the <hotwheels4u.com> domain name prior to the filing of the instant Complaint. Respondent’s WHOIS information does not indicate that it is known by the disputed domain name, and there does not appear to be any other information in the record to this effect. Additionally, there is no indication that Respondent is associated in any way with Complainant or authorized to use Complainant’s HOT WHEELS mark in any way. As Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), he does not have rights or legitimate interests with regards to the <hotwheels4u.com> domain name under this area of the Policy. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using the <hotwheels4u.com>
domain name to display a website that advertises the disputed domain name as
being for sale. Furthermore, Respondent’s
offers to sell the <hotwheels4u.com> domain name are
neither 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), and indicate that Respondent lacks rights and
legitimate interests in the disputed domain name. See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the
respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use); 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.”).
Respondent’s
offers to sell the <hotwheels4u.com> domain name, both
on the website resolving from the disputed domain name, and to Complainant
directly in e-mail correspondence, indicate that Respondent registered and is
using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded, are evidence of bad faith”).
Moreover,
the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii) because Respondent had actual knowledge of
Complainant’s mark at the time it registered the disputed domain name. In his Response, Respondent does speak of
knowledge of Complainant and Complainant’s HOT WHEELS mark, as well as other
products produced by Complainant. See Entrepreneur Media, Inc.
v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
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 <hotwheels4u.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: June 25, 2007
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum