Mattel, Inc.
v. Dan Rukes
Claim Number: FA0109000099678
PARTIES
Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan. Respondent is Dan Rukes, Jacksonville Beach, FL (“Respondent”) .
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <barbieandfriends.com>,<barbiecollectable.com>,
<barbiecollectible.com>,<barbiecollectors.com>,
<barbiedollcollectors.com>,<barbiebrokerage.com>,
<barbiedollbroker.com>,<barbiedolltrader.com>,
<barbiedolltraders.com>,<barbiedollweb.com>,<barbievintage.com>,
<collectablebarbie.com>,<collectiblebarbie.com>, registered with CORE.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn
Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 6, 2001; the Forum received a hard copy of the Complaint on September 10, 2001.
On September 12, 2001, CORE
confirmed by e-mail to the Forum that the domain names <barbieandfriends.com>,<barbiecollectable.com>,
<barbiecollectible.com>,<barbiecollectors.com>,
<barbiedollcollectors.com>,<barbiebrokerage.com>,
<barbiedollbroker.com>,<barbiedolltrader.com>,
<barbiedolltraders.com>,<barbiedollweb.com>,<barbievintage.com>,
<collectablebarbie.com>,<collectiblebarbie.com> are registered with CORE and that Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 September 17, 2001, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 9, 2001 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@barbieandfriends.com,
barbiecollectable.com,
barbiecollectible.com,
barbiecollectors.com,
barbiedollcollectors.com,
barbiebrokerage.com,
barbiedollbroker.com,
barbiedolltrader.com,
barbiedolltraders.com,
barbiedollweb.com, barbievintage.com,
collectablebarbie.com, collectiblebarbie.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant urges the following:
The<barbieandfriends.com>,<barbiecollectable.com>,
<barbiecollectible.com>,<barbiecollectors.com>,
<barbiedollcollectors.com>,<barbiebrokerage.com>,
<barbiedollbroker.com>,<barbiedolltrader.com>,
<barbiedolltraders.com>,<barbiedollweb.com>,<barbievintage.com>,
<collectablebarbie.com>,<collectiblebarbie.com> domain names are confusingly similar to Complainant's registered BARBIE mark.
Respondent does not have rights or legitimate interests in respect to the disputed domain names.
The disputed domain names were registered and used by Respondent in bad faith.
B. Respondent did not submit a response in this proceeding.
FINDINGS
Since 1962, Complainant has owned the trademark BARBIE in relation to dolls, toys, clothes, and accessories and is registered with the United States Patent and Trademark Office. Complainant has used the mark continuously and has invested large sums of money in promoting the BARBIE mark.
Respondent registered the disputed domain names on October 12, 1999. Respondent has not made any use of the disputed domain names. Respondent is not commonly known by the mark BARBIE or by any of the disputed domain names.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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,
through its continuous use and trademark registrations has established that it
has rights in the BARBIE mark.
Furthermore, the disputed domain names are confusingly similar to
Complainant's mark because they incorporate Complainant's entire mark with the
addition of generic terms. It has been
found that the addition of generic terms to another's mark does not defeat a
claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term); see also Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding
that four domain names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to
Complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does not take
the disputed domain name out of the realm of confusing similarity).
The Panel finds that the domain names registered by Respondent that incorporate in their entirety Complainant’s mark are confusingly similar to Complainant’s mark.
As set out above, Complainant has established its rights to and legitimate interest in the mark that is contained in its entirety within the domain names that were registered by Respondent and are at issue in this proceeding. Respondent has not come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interest in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
There is no evidence, and Respondent does not refute, that Respondent has rights or legitimate interests in respect to the disputed domain names. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
Furthermore, Respondent has no rights and legitimate interests because it has held the disputed domain names for almost two years and has failed to develop a website. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).
The Panel finds that Complainant has rights in the mark and domain names that are confusingly similar to that mark and that Respondent does not have such rights or legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent acted in bad faith in registering and holding the domain names that contain in its entirety the well-known mark of this Complainant. The Panel agrees. Respondent registered the domain names in bad faith because the famous nature of Complainant’s mark permits the inference that Respondent knew of the Complainant's famous mark when he registered the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Respondent's registration and passive holding of the domain name also supports a finding of bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
The Panel finds that Respondent registered and held the domain names in issue in bad faith. Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the
<barbieandfriends.com>,<barbiecollectable.com>,
<barbiecollectible.com>,<barbiecollectors.com>,
<barbiedollcollectors.com>,<barbiebrokerage.com>,
<barbiedollbroker.com>,<barbiedolltrader.com>,
<barbiedolltraders.com>,<barbiedollweb.com>,<barbievintage.com>,
<collectablebarbie.com>,<collectiblebarbie.com> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 31, 2001.
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