DECISION

Mattel, Inc. v. Equipment Outlet Express

Claim Number: FA0206000114459

PARTIES

Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan.  Respondent is Equipment Outlet Express, Sanford, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <myhotwheels.com>, registered with Tucows, Inc.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 31, 2002; the Forum received a hard copy of the Complaint on June 6, 2002.

On June 3, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <myhotwheels.com> 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 June 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 2002 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@myhotwheels.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 July 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <myhotwheels.com> domain name is confusingly similar to Complainant’s HOT WHEELS mark.

Respondent has no rights or legitimate interests in the <myhotwheels.com> domain name.

Respondent registered and used the <myhotwheels.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous trademarks registered on the Principal Register of United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 843,156; 884,563; 907,266; and 1,810,905).  Complainant’s HOT WHEELS mark first gained trademark status from the USPTO in 1968.  Complainant has since continually used the HOT WHEELS mark for scale model toy vehicles, miniature toy automobiles and accessories, race sets, race tracks and candy.  Through Complainant’s substantial use of the HOT WHEELS mark with its products, the mark has become synonymous with kids’ toys and collectibles. 

Respondent registered the <myhotwheels.com> domain name on May 31, 2001.  Respondent uses the <myhotwheels.com> domain name to link to a website development page.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established its rights to the HOT WHEELS mark through registration with the USPTO and subsequent continuous use.

Respondent’s <myhotwheels.com> domain name contains Complainant’s HOT WHEELS mark, absent the space, and with the addition of the prefix “my.”  Spaces are not permitted in domain names; therefore, Respondent’s omission of the space in the HOT WHEELS mark is inconsequential.  Also, adding the common word “my” as a prefix to Complainant’s mark in a domain name does not detract from the mark’s dominating presence in the domain name.  Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.  See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark…”); see also Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume that Respondent has no such rights or legitimate interest in the disputed domain name.  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 respond, all inferences may be drawn in favor of the 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”).

Respondent uses the <myhotwheels.com> domain name in order to divert Internet users seeking Complainant’s products to an unrelated website, where Respondent attempts to grab the attention of the diverted Internet users for commercial development of personal websites.  Respondent’s use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Respondent never asked for or received permission from Complainant to use the HOT WHEELS mark in the disputed domain name.  There is no evidence on the record and Respondent has not offered any evidence that it is commonly known by <myhotwheels.com> or MYHOTWHEELS.  Respondent is only known to this Panel as Equipment Outlet Express.  Thus, Respondent failed to satisfy the burden of Policy ¶ 4(c)(ii) and has no rights or legitimate interests in the <myhotwheels.com> domain name.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent had constructive notice of Complainant’s rights in the HOT WHEELS mark due to the notoriety the mark has gained from Complainant’s extensive use and the mark’s status as being registered on the Principal Register of the USPTO.  Thus, Respondent’s registration of the <myhotwheels.com> domain name, despite notice of Complainant’s rights, constitutes bad faith under Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Respondent uses the <myhotwheels.com> domain name for its commercial business of personal website development.  Respondent registered and used the domain name in hopes of attracting Internet users interested in developing a website.  Respondent’s use has no connection with Complainant’s products offered under the HOT WHEELS mark.  Nevertheless, the use of Complainant’s entire mark with an insignificant addition, such as “my,” fails to dissolve all potential source or affiliation confusion among consumers.  Therefore, Respondent’s conduct represents bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satified.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <myhotwheels.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 12, 2002

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