DECISION

Mattel, Inc. v. Kim Dong Jin

Claim Number: FA0206000114462

PARTIES

Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan.  Respondent is Kim Dong Jin, BupyeongGu, Incheon, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <skeletor.com>, registered with iholdings.com.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 3, 2002; the Forum received a hard copy of the Complaint on June 6, 2002.

On June 4, 2002, iholdings.com confirmed by e-mail to the Forum that the domain name <skeletor.com> is registered with iholdings.com and that the Respondent is the current registrant of the name.  iholdings.com has verified that Respondent is bound by the iholdings.com 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 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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@skeletor.com by e-mail.

A timely Response was received and determined to be complete on July 8, 2002.

On July 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims that the domain name at issue, <skeletor.com>, is identical to its USPTO trademark, SKELETOR, which has been used in commerce to identify toy action figures since 1981 and was registered in 1982.  Further, Complainant asserts that the Respondent has no rights in the trademark and that it was registered and is used in bad faith to deprive the Complainant access to the domain for selling and promoting its SKELETOR trademarked toys.

B. Respondent

Respondent does not deny that the domain name at issue is identical or confusingly similar to Complainant’s registered trademark but asserts that the SKELETOR mark is not known in Korea.  Further, Respondent has unspecified future plans to use the <skeletor.com> as a website devoted to “skeletons.”  Finally, Respondent alleges that he did not register the domain name at issue in bad faith and that Complainant can always register <skeletor.biz> as a site to promote its action figures.

FINDINGS

It is undisputed that Complainant has used the mark, SKELETOR, for more than twenty years in connection with action toys and registered the trademark in 1982 with the U.S. Patent and Trademark Office.  Respondent’s <skeletor.com> domain name is identical to Complainant’s SKELETOR mark because the domain name contains Complainant’s entire mark with only the inconsequential addition of the generic top-level domain “.com.”  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Complainant also asserts that Respondent registered the <skeletor.com> domain name to inhibit Complainant from registering the domain name for its own business use.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).  Respondent has not made any effort to rebut Complainant’s claim of non-use by Respondent other than to claim without elaboration that the domain name at issue will be used to host a site dedicated to “skeletons.”

Without any factual support, Complainant claims that Respondent registered <skeletor.com> “with a bad faith intent to profit from that registration.” and argues that Respondent registered the domain name to prevent it from registering a corresponding domain name and using it to promote its Masters of the Universe brand of products.  The “bad faith” element is frequently difficult to establish because of its subjective nature and the fact that the UDRP proceeding may have been brought soon after an offensive registration of the domain name at issue.  Nonetheless, some factual basis ought to be offered by Complainant to satisfy this element.  In this case, the Complainant does not even indicate that it sent a letter, FAX or email to the Respondent with a cease and desist demand.  While an argument might be made that the mark is famous and that toys with the SKELETOR mark find their way into Korean department stores, thus making any  infringement willful, no such argument has been put forward.  Accordingly, Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith since Complainant produced no credible evidence of bad faith on the part of Respondent.  See Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the Complainant has failed to prove that the domain name <ezstreet.com> was registered and is being used in bad faith or held passively for use by the Respondent in bad faith).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 and is being used in bad faith.

Identical and/or Confusingly Similar

I find that <skeletor> is identical or confusingly similar to Complainant’s SKELETOR registered trademark.

Accordingly, Complainant has satisfied Paragraph 4(a)(1) of the Policy.

Rights or Legitimate Interests

I find that Respondent’s sketchy plans for future use of the domain name at issue, the fact that no license or use has been pled and that Respondent is apparently not generally known as “Skeletor” strongly suggest that Respondent has no rights or legitimate interests in respect of the domain at issue.

            Paragraph 4(a)(2) of the Policy has been satisfied.

Registration and Use in Bad Faith

Unfortunately for Complainant, no facts were pled or proved which satisfied the bad faith registration and use requirement.

Accordingly, Paragraph 4(a)(3) of the Policy has NOT been satisfied.

DECISION

It is the decision of this Panel that the domain name at issue, <skeletor.com>, shall NOT be transferred from Respondent to the Complainant.

James A. Carmody, Esq., Panelist
Dated: July 19, 2002

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