Mattel, Inc. v. Unknown c/o Dora Marks
Claim Number: FA0506000490083
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is Unknown c/o Dora Marks (“Respondent”), P.O. Box 818, Florence, OR 97439.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbie.us>, registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Joel Grossman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 2, 2005; the Forum received a hard copy of the Complaint on June 7, 2005.
On June 2, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <barbie.us> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 29, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on June 20, 2005.
On June 27, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Joel Grossman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, a famous toy company, holds many trademarks in the name “Barbie,” a very popular doll which is universally associated with Complainant’s company. Complainant also maintains websites with a virtually identical name to the disputed site, namely “barbie.com” and “barbie.net.” Complainant asserts that the domain name at issue is confusingly similar and dilutive of its registered Barbie trademark. Complainant further asserts that Respondent has no legitimate right or interest in the domain name, as Respondent has not been known by the name Barbie and does no business with the name; instead the website merely refers visitors to a website that solicits offers to buy the domain name. Finally, Complainant asserts that Respondent has registered and used the domain name in bad faith, as (1) it prevents Complainant from using this name for its own business, and (2) Respondent’s use of the domain name dilutes its trademark in the name Barbie because it lessens the ability for this trademark to identify Complainant’s products.
Respondent admits the validity of Complainant’s trademark, and that it has no trademark in the name “Barbie.” Respondent states that it purchased the domain name in an auction as an investment, with the intent to sell the domain name for a profit. Respondent contends that it did not purchase the domain name with the intent to sell it to Complainant. Respondent asserts that the domain name does not create confusion or dilution, since those interested in Complainant’s products would first go to Complainant’s sites “barbie.com” or “barbie.net.” Respondent asserts that there is nothing wrong with acquiring a domain name for the sole purpose of reselling the name for a profit.
The panel finds that the domain name “barbie.us” is identical to, or at least confusingly similar to Complainant’s trademark “Barbie.” The panel also finds that Respondent has no legitimate rights or interest in the name. Finally, the panel finds that the domain name was registered and is being used in bad faith.
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.”
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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
The domain name is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark. See, Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002). Even assuming that the domain name is not identical to the trademark because of the country code, the domain name is certainly confusingly to the trademark, and the general public could easily believe that it is sponsored by the trademark owner.
Rights or Legitimate Interests
Because the domain name is identical to Complainant’s trademark, Complainant has made a prima facie case that Respondent has no legitimate interests in the domain name, and the burden shifts to Respondent to establish it has rights or legitimate interests in the name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). In this case, Respondent has no evidence to meet its burden. Respondent concedes that it is not known by the name, has no trademark in the name and does not do business in any manner using the name. Rather, Respondent’s sole use of the name is as “an investment,” namely hoping to resell the name to another party for a profit. Respondent’s willingness to sell the name demonstrates further that it has no legitimate rights or interest in the name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003).
Registration and Use in Bad Faith
The evidence shows that Respondent initially acquired the domain name, and currently is using the domain name solely for the purpose of soliciting offers to purchase the domain name so it may be resold for a profit. Respondent notes in its response that at the time it purchased the domain name it “wondered why Mattel themselves (sic) had not registered or purchased the name.” This suggests to the panel that the Respondent’s original motivation may have been to purchase and hold the name until selling it to Complainant. Additionally, Respondent states that “the name can be used by someone licensed by Mattel to sell Barbie,” thus suggesting that Respondent’s intent when purchasing the name was to sell it either to Complainant or Complainant’s licensee. The panel finds that this constitutes bad faith registration and use under Policy 4(b). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000), explaining that the introductory language in section 4 (b) of the Policy notes that the following circumstances “in particular but without limitation” constitute evidence of bad faith. Thus, when section 4(b)(i) refers to registering a domain name with the intent of selling it to the trademark owner (which may well be the case here) as an example of bad faith registration and use, that is given as an example and is not a limitation. Complainant does not have to show that Respondent intended to sell the domain name to Complainant. Even if Respondent intended to sell the name to Complainant’s licensee and not to Complainant, this case still falls within 4(b). See Bank of America Corp. v. Northwest Free Cmty, Access FA 180704 (Nat. Arb. Forum Sept. 30, 2003) and Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). The panel notes that Respondent claims that it has recently attempted to sell the domain name to Complainant for only out of pocket costs; but this attempt came only recently, after the Complainant had notified Respondent of its intent to file this action. The panel is sympathetic to Respondent’s claim that Respondent did not know there was anything improper about acquiring the domain name with the intent of reselling it for a profit. However, under applicable law and precedent, given the Complainant’s identical trademark, and given Respondent’s intention to sell the name either to Complainant or its licensee, the panel determines that the registration and use was in bad faith, as that term is used in the Policy.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbie.us> domain name be TRANSFERRED from Respondent to Complainant.
Joel Grossman, Panelist
Dated: July 11, 2005
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