Mattel, Inc. v. Joecel Luy
Claim Number: FA0705000989683
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 <barbie-girls.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2007.
On May 17, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <barbie-girls.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 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@barbie-girls.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 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.
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 <barbie-girls.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbie-girls.com> domain name.
3. Respondent registered and used the <barbie-girls.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., is a worldwide producer of dolls and toys. In conjunction with the provision of these products and related services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”), including the BARBIE mark (Reg. No. 728,811 issued March 20, 1960).
Respondent registered the <barbie-girls.com> domain name on May 5, 2006. The disputed domain name resolves a website promoting an adult escort agency.
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.
Complainant avouches rights in the BARBIE mark through
registration of the mark with the USPTO.
The Panel finds that Complainant’s timely registration and extensive use
of the BARBIE mark for over forty-six years establishes its rights in the mark
pursuant to 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The disputed domain name contains
Complainant’s mark in its entirety and adds a hyphen, the descriptive term
“girls,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
hyphen, a descriptive term, and a gTLD fails to sufficiently distinguish the
disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). See Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also Health Devices Corp.
v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth evidence indicating
that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See SEMCO Prods.,
LLC v. dmg world media (
Respondent’s disputed domain name resolves to a website that
advertises the services of an adult escort agency. The Panel finds that such use is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no
rights or legitimate interests in the famous MSNBC mark where the respondent
attempted to profit using the complainant’s mark by redirecting Internet
traffic to its own website); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to
commercially benefit from a domain name that is confusingly similar to
another's mark by linking the domain name to an adult-oriented
website [is] evidence that the registrant lacks rights or legitimate interests
in the domain name.”).
Complainant proclaims that Respondent is not commonly known by the disputed domain name. Upon a cursory review of Respondent’s WHOIS registration information, the registrant of the <barbie-girls.com> domain name was found to be “Joecel Luy.” In light of a lack of countervailing evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect unsuspecting Internet users to its own website, which promotes its adult-oriented escort business. The Panel finds that such use demonstrates registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also 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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbie-girls.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 19, 2007
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