Mattel, Inc. v. Host Master / 1337 Services LLC
Claim Number: FA2308002055706
Complainant is Mattel, Inc. (“Complainant”), USA, represented by Sharoni S. Finkelstein, USA. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mattel-corporate.com>, registered with Tucows Domains 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on August 1, 2023; Forum received payment on August 1, 2023.
On August 2, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <mattel-corporate.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mattel-corporate.com. Also on August 2, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
i) Complainant, Mattel, Inc. is a leading global toy company and owner of one of the strongest portfolios of children’s and family entertainment franchisees in the world. By means of its widespread use of MATTEL mark, Complainant has established common law rights. Complainant has rights in the MATTEL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 0,753,681 registered on July 30, 1963). The disputed domain name is confusingly similar to Complainant’s MATTEL mark because it incorporates the mark in its entirety and adds the generic word “corporate” and the generic top-level domain name (“gTLD”) “.com.”
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MATTEL mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant.
iii) Respondent registered and used the disputed domain name in bad faith for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s MATTEL mark. Respondent is using the disputed domain name for a fraudulent website that misappropriates the famous MATTEL logo, and which appears to be a clone of Complainant’s official corporate website. Respondent has included links in the infringing website that route to Complainant’s own website. Respondent registered the disputed domain name with constructive or actual knowledge of Complainant’s rights in the MATTEL mark. Respondent concealed its identity on WHOIS.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on July 21, 2023.
2. Complainant has established rights in the MATTEL mark based upon registration with the USPTO (e.g., Reg. No. 0,753,681 registered on July 30, 1963).
3. The disputed domain name’s resolving website mimics Complainant’s website displaying Complainant’s MATTEL logo, which is a clone of Complainant’s official corporate website. Respondent has included links in the disputed domain name’s resolving website that route to Complainant’s own website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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; 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MATTEL mark based upon registration with the USPTO (e.g., Reg. No. 0,753,681 registered on July 30, 1963). Registration of a mark with the USPTO is a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the MATTEL mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <mattel-corporate.com> is confusingly similar to Complainant’s MATTEL trademark because it incorporates the mark in its entirety and adds the generic word “corporate” and the gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top-level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s MATTEL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MATTEL mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The unmasked WHOIS information identifies Respondent as “Host Master / 1337 Services LLC.” Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Complainant provides a screenshot of the resolving webpage, which mimics Complainant’s website by displaying Complainant’s MATTEL logo, which is a clone of Complainant’s official corporate website. Respondent has included links in the disputed domain name’s resolving website that route to Complainant’s own website.
Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See hipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). The Panel therefore finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent selected, registered, and used the disputed domain name in bad faith for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s MATTEL mark. The Panel finds that the disputed domain name resolves to a website that impersonates Complainant’s official corporate website, which features the MATTEL logo at the top right, and displays the same menu headings along the top of the webpage, which creates an air of legitimacy. Further, the links contained within the fraudulent webpage route to Complainant’s own website.
The Panel finds that Respondent’s passing itself off as Complainant as well as redirection of customers from the disputed domain name to Complainant’s legitimate website is likely to create confusion as to the association of the parties, instill mistaken confidence in Internet users that the disputed domain name is a reliable website for consumers interested in Complainant’s offerings, and ultimately to take economic advantage of future consumers through Respondent’s efforts to legitimize the disputed domain name. See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when “Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.”). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent registered the disputed domain name with constructive or actual knowledge of Complainant’s rights in the MATTEL mark. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant’s rights in the mark given the fame and the longstanding use of Complainant’s mark. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the MATTEL mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <mattel-corporate.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 24, 2023
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