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Generic Top Level Domain Name (gTLD) Decisions |
Mattel, Inc. v. Barbiechannel
Claim Number: FA0201000103870
PARTIES
Complainant
is Mattel, Inc., El Segundo, CA
(“Complainant”) represented by William
Dunnegan, of Perkins & Dunnegan. Respondent is Barbiechannel, Ulsan, South Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <barbiechannel.com>,
registered with Gabia, 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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 15, 2002; the Forum received
a hard copy of the Complaint
on January 18, 2002. The Complaint was
submitted in both Korean and English.
On
January 16, 2002, Gabia, Inc. confirmed by e-mail to the Forum that the domain
name <barbiechannel.com> is
registered with Gabia Inc. and that Respondent is the current registrant of the
name. Gabia, Inc. has verified that
Respondent is bound by the Gabia, 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
January 25, 2002, a Korean language Notification of Complaint and Commencement
of Administrative Proceeding (the “Commencement
Notification”), setting a
deadline of February 14, 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@barbiechannel.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
February 18, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
John J. Upchurch 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.
Pursuant
to Rule 11(a), the Panel determines that the language requirement has been
satisfied through the Korean language Complaint
and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
disputed domain name <barbiechannel.com> is confusingly similar to
the BARBIE mark, in which Complainant holds rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant holds multiple registrations
of the BARBIE trademark, registered on the Principal Register of the United
States Patent
and Trademark Office, dating back as early as March 20, 1962.
Complainant has used its BARBIE mark
continuously in commerce since September 1960, in association with various
children’s products
such as the BARBIE doll and accessories, a teen magazine,
wrist watches, autograph books and diaries, eating utensils and tea sets,
Halloween costumes, toiletries, toy vehicles, clothing, jewelry, cosmetics, and
purses.
Complainant currently hosts information
related to its BARBIE products online at various domain names incorporating the
BARBIE mark,
including <barbie.com>, <barbiecollectibles.com>, and
<barbiecollectiblesstore.com>, among others.
Respondent registered the disputed domain
name on July 23, 2001 and has used it to display a picture of Complainant’s
BARBIE doll
product and to direct users to an online toy store.
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 in
the BARBIE mark through registration with the U.S. Patent and Trademark Office
and subsequent
continuous use. It is
insignificant under Policy ¶ 4(a)(i) that Complainant has not provided evidence
of trademark registration in Korea, Respondent’s
country of residence, as the
Policy only requires Complainant to demonstrate its rights in some
jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which a Respondent
operates. It is sufficient that a Complainant can
demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000)
(holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’
but only that complainant has a bona fide basis
for making the Complaint in the first place).
The disputed domain name is confusingly
similar to Complainant’s BARBIE mark.
The addition of the word “channel” to the mark does not significantly
alter the meaning of the mark so as to 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 contained the identical mark of the
Complainant combined with a generic
word or term); see also Broadcom
Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding
the <broadcomonline.com> domain name to be confusingly similar to
Complainant’s
BROADCOM mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in the BARBIE mark.
Because Respondent has not submitted a Response in this matter, the
Panel may presume it has no such rights or interests 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).
Respondent’s use of the infringing domain
name in order to direct Internet users to an unaffiliated commercial website
cannot be deemed
a bona fide use of the domain name pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com>
and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with the Complainant's mark CATERPILLAR);
see also Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent had
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark).
Further, although Respondent listed
“barbiechannel” as the registrant of the disputed domain name, it has provided
no evidence that
it is actually commonly known by the domain name pursuant to
Policy ¶ 4(c)(ii). See AT&T Corp. v. Domains by Brian Evans,
D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests
where Respondent alleged that it intended to use the
domain name
<attweb.com> for a company called “At the Web” but failed to provide any
evidence as to the existence of the company);
see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶
4(c)(ii) “to require a showing that one has been commonly known by
the domain
name prior to registration of the domain name to prevail”) (emphasis
added).
The Panel thus finds that Respondent has
no rights or legitimate interests in respect of the disputed domain name and
that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used a domain
name that incorporated Complainant’s entire BARBIE mark in order to confuse
Internet users
and divert them to its own commercial website. Such use demonstrates bad faith registration
and use under Policy ¶ 4(b)(iv). See
Nat’l Rifle Ass'n. v. fredg.com,
FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent
registered the domain names <friendsofnra.com>,
<friendsofnra.net>,
and <friendsofnra.org> with
the intention of using the domain names in connection with individual NRA
fundraising, but without permission from Complainant
to use the registered
marks); see also Anne of Green
Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12,
2000) (finding bad faith where Respondent used the domain name
<anneofgreengables.com> to link
users to a website that contained
information about the Anne of Green Gables literary works, motion pictures and
the author, L. M.
Montgomery, because a visitor to the website may believe that
the owner of the mark ANNE OF GREEN GABLES is affiliated with or has
sponsored
or endorsed Respondent's web site).
Further, because of the wide notoriety of
the BARBIE mark and Respondent’s apparent awareness of Complainant’s BARBIE
products and
marks, Respondent’s registration and use of <barbiechannel.com>
suggests an opportunistic attempt to trade on the valuable goodwill and fame
Complainant has achieved in its marks. See
Victoria's Secret v. Hardin, FA
96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety
of Complainants' famous marks, Respondent had actual
or constructive knowledge
of the BODY BY VICTORIA marks at the time she registered the disputed domain
name and such knowledge constitutes
bad faith); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding 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”).
Accordingly, 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 the requested relief
should be hereby
granted.
Accordingly, it is Ordered that the <barbiechannel.com>
domain name be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 25, 2002
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