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Generic Top Level Domain Name (gTLD) Decisions |
Mattel, Inc. v. Yesbarbie
Claim Number: FA0207000114754
PARTIES
Complainant
is Mattel, Inc., El Segundo, CA, USA
(“Complainant”) represented by William
Dunnegan, of Perkins & Dunnegan. Respondent is Yesbarbie, Seoul, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <yesbarbie.com>,
registered with YesNIC Co., Ltd.
PANEL
On September 10, 2002 pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed
James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 1, 2002; the Forum received
a hard copy of the Complaint
on July 8, 2002.
On
July 23, 2002, YesNIC Co., Ltd. confirmed by e-mail to the Forum that the
domain name <yesbarbie.com> is
registered with YesNIC Co., Ltd. and that Respondent is the current registrant
of the name. YesNIC Co., Ltd. has
verified that Respondent is bound by the YesNIC Co., Ltd. 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
July 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 19,
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@yesbarbie.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.
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
<yesbarbie.com> domain name is confusingly similar to
Complainant’s BARBIE mark.
Respondent
has no rights or legitimate interests in the <yesbarbie.com>
domain name.
Respondent
has registered and used the <yesbarbie.com> domain name in bad
faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns U.S. Patent and
Trademark Office (“USPTO”) Reg. No. 689,055 for the BARBIE mark. The date of first use for the BARBIE mark
has been noted as May 9, 1958. Since
Complainant’s first use and registration of the BARBIE mark, Complainant has
actively sought to protect the BARBIE mark by renewing
its registration with
the USPTO and registering the BARBIE mark for its numerous alternative uses.
Respondent registered the <yesbarbie.com>
domain name on November 11, 2000.
Complainant has revealed that Respondent has only used the domain name
to sell dolls, including Complainant’s BARBIE dolls and re-costumed
BARBIE
dolls.
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 rights in the
BARBIE mark through proof of numerous registrations with the USPTO and
continuous use of
the mark in commerce since 1958.
Respondent’s <yesbarbie.com>
domain name contains Complainant’s entire BARBIE mark with the prefix “yes,”
which is a generic word. It has been
consistently held that a generic word added to a famous mark does not take the
domain name out of the realm of confusing
similarity. Therefore, Respondent’s domain name, incorporating Complainant’s
distinct BARBIE mark, is confusingly similar to the BARBIE mark. 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 Complainant
combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract
from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward and
oppose Complainant’s contentions that Respondent has no rights or legitimate
interests in
the <yesbarbie.com> domain name. Therefore, the Panel may presume that
Respondent has no such rights or legitimate interests in the 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); see
also Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately
apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Furthermore, since Respondent has not
submitted a Response, all reasonable inferences may be drawn in favor of
Complainant. In addition, Complainant’s
establishment of a prima facie case shifts the burden to Respondent to
show rights or legitimate interests. See
Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in
respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name).
Complainant has provided evidence that
Respondent uses the <yesbarbie.com> domain name in connection with
a website that sells dolls, including Complainant’s BARBIE dolls. Respondent has failed to dispute
Complainant’s assertions and supportive evidence of Respondent’s purported use
of the domain name. Using a domain name
that incorporates the mark of another to sell similar goods, goods that the mark
specifically denotes, does not
represent a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it
constitute
a fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that
domain names used to sell Complainant’s goods without Complainant’s authority,
as
well as others’ goods is not bona fide use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Chanel, Inc. v. Cologne Zone,
D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell
Complainant’s perfume, as well as other brands of
perfume, is not bona fide
use).
Complainant has never authorized
Respondent to use the BARBIE mark for any purpose. Also, upon registering the domain name Respondent provided
“yesbarbie” as its registration name for WHOIS purposes. However, there is no supportive proof that
Respondent is commonly known as <yesbarbie.com>. It is highly unlikely that Respondent could
be commonly known by a name that is substantially similar to Complainant’s
well-used,
longstanding and distinct BARBIE mark. 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 Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <yesbarbie.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
As previously mentioned, Respondent uses
Complainant’s BARBIE mark in the <yesbarbie.com> domain name for
purposes of selling dolls, including BARBIE dolls, at the attached
website. Hence, Respondent diverts
Internet consumers that may be searching for Complainant’s BARBIE related
products to a competing website.
Respondent’s use of the domain name evidences an intent to create
consumer confusion as to Complainant’s sponsorship or affiliation
with Respondent’s
infringing website. Thus, Respondent
registered and uses the <yesbarbie.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial
gain by creating a
likelihood of confusion with Complainant’s mark and offering the same chat
services via his website as Complainant);
see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where
similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <yesbarbie.com>
domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: September 12, 2002
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