DECISION

Mattel, Inc. v. Phayze, Inc.

Claim Number:  FA0302000147303

PARTIES

Complainant is Mattel, Inc., El Segundo, CA, USA (“Complainant”) represented by William Dunnegan of Perkins & Dunnegan. Respondent is Phayze Inc., Paris, II, FRANCE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbiexxx.com>, registered with I.D.R., Internet Domain Registry Ltd.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 28, 2003; the Forum received a hard copy of the Complaint on March 3, 2003.

On March 5, 2003, Internet Domain Registry Ltd. confirmed by e-mail to the Forum that the domain name <barbiexxx.com> is registered with Internet Domain Registry Ltd. and that Respondent is the current registrant of the name. Internet Domain Registry Ltd. verified that Respondent is bound by the Internet Domain Registry 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 March 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 2003, 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@barbiexxx.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 April 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following assertions:

1. The domain name registered by Respondent, <barbiexxx.com>, is confusingly similar to Complainant’s BARBIE mark.

2. Respondent has no rights to or legitimate interests in the <barbiexxx.com> domain name.

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Mattel, Inc., owns numerous U.S. Patent and Trademark Office (“USPTO”) trademark registrations for the BARBIE mark, including, inter alia: 689,055 issued in 1959; 728,811 issued in 1962; 741,208 issued in 1962; and 772,298 issued in 1964. Complainant’s USPTO registrations show that the BARBIE mark represents a variety of consumer goods, from dolls to magazines, clothes, plastic ware, cosmetics, jewelry, purses, songs and facial tissues. Complainant’s USPTO registration indicates that first use of the BARBIE mark occurred in 1958.

Respondent, Phayze, Inc., registered the <barbiexxx.com> domain name on September 5, 2002. Complainant’s investigation of Respondent’s use of the subject domain name reveals that <barbiexxx.com> links to various pornographic websites, such as “Hanky-Panky-College – The Secret To Getting FREE XXX PASSWORDS To Top Adult Paysites,” located at <hanky-panky-college.com/party-girls.html>.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 in this proceeding that it has rights in the BARBIE mark through numerous registrations with the USPTO and by continuous use of the mark in commerce since at least 1958. See Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The domain name registered by Respondent, <barbiexxx.com>, is confusingly similar to Complainant’s BARBIE mark. The domain name registered by Respondent incorporates Complainant’s famous mark in its entirety, and only deviates by the addition of the symbol “XXX,” which to many denotes an adult content. Further, the addition of the top-level domain “.com” is inconsequential when conducting an analysis under Policy ¶ 4(a)(i). Because Respondent’s domain name attempts to create an unauthorized likeness to Complainant’s BARBIE mark by incorporating that mark into the domain name, it is confusingly similar. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to contest Complainant’s contentions; therefore, all reasonable inferences made by Complainant are regarded as true. Once Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name, the burden shifts to Respondent to provide credible evidence that supports its claim to the domain name. Because Respondent failed to submit a Response that substantiates its rights in the <barbiexxx.com> domain name, Respondent fails to advance any set of circumstances that would support its interest in the domain name. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complaint to be deemed true); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions, which Complainant asserts can be drawn from the facts); 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 with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Uncontested evidence reveals that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) and that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i). The domain name registered by Respondent, <barbiexxx.com>, displays pornographic images and links to various explicit websites. Although pornography can constitute a bona fide offering of services under the Policy, in the present case Respondent tarnishes the goodwill of Complainant’s mark in order to create Internet interest in its offerings. Such opportunistic use of a famous mark fails to establish rights or legitimate interests in the domain name. Additionally, Complainant’s evidence includes a printout of Respondent’s website, where Respondent seeks to solicit memberships and collect credit card numbers; thus, Respondent is commercially benefiting from its infringing domain name. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).

No evidence suggests that Respondent is commonly known by the <barbiexxx.com> domain name or by any confusingly similar variation thereof. Complainant’s investigation indicates that Respondent does not have any trademark or service mark registrations that would support Respondent’s rights in the domain name. Further, because of the fame associated with the BARBIE mark and the duration of its use in commerce, it is presumed that Respondent cannot establish rights or legitimate interests in a domain name using Complainant’s well known mark under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Accordingly, the Panel finds Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

In determining whether bad faith registration exists the Panel is permitted to consider the “totality of circumstances” surrounding Respondent’s registration of <barbiexxx.com>. Therefore, the Panel is not limited to the provisions articulated under Policy paragraph 4(b) in finding bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Complainant’s BARBIE mark has accumulated significant international goodwill and the BARBIE mark and goods are synonymous with Complainant, Mattel, Inc. Respondent’s infringing use of the domain name to link to explicit images, taken in conjunction with the fame of Complainant’s mark, allow the Panel to infer that Respondent intentionally registered a domain name it knew to be confusingly similar to Complainant’s mark. Respondent’s registration of the domain name, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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).

Respondent used the <barbiexxx.com> domain name in bad faith when it chose to use the infringing domain name in connection with pornography. Respondent’s use of the domain name tarnishes Complainant’s BARBIE mark, and exploits the goodwill Complainant has developed in its mark over the past forty-five years. Use of another’s well-known mark to provide links to pornographic material is evidence of bad faith registration and use under the Policy. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of a confusingly similar domain name with a pornographic website constitutes bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

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

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: April 15, 2003.

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