DECISION

Mattel, Inc. v. Laura Lively

Claim Number:  FA0306000165951

PARTIES

Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan.  Respondent is Laura Lively, Kimberley, British Columbia, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbietraders.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 27, 2003; the Forum received a hard copy of the Complaint on June 30, 2003.

On July 2, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <barbietraders.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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@barbietraders.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 August 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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. Respondent’s <barbietraders.com> domain name is confusingly similar to Complainant’s BARBIE mark.

2. Respondent does not have any rights or legitimate interests in the <barbietraders.com> domain name.

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

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

FINDINGS

Complainant uses the BARBIE mark in conjunction with selling toy dolls (BARBIE Dolls) and doll clothing.  Complainant holds several registrations with the U.S. Patent and Trademark Office for the BARBIE mark, including Reg. Nos. 689,055 (registered Dec. 1959); 728,811 (registered March 20, 1962); and 741,208 (registered Nov. 27, 1962).

Complainant uses many domain names in conjunction with its business, including but not limited to <barbie.com>, <barbiegalleries.com>, <barbieshop.com> and <barbieworld.com>.

Respondent registered the <barbietraders.com> domain name on June 12, 2003.  The disputed domain name links to a website that allows Internet users to buy and sell 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 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 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 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 rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office.  See Men’s Wearhouse, Inc. v. 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”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <barbietraders.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name fully incorporates the BARBIE mark and links to a website that sells BARBIE Dolls.  The addition of the generic word “traders” to the BARBIE mark is insufficient to distinguish the disputed domain name from Complainant’s mark.  See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity (sic) or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry).

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

Rights or Legitimate Interests

Due to Respondent’s failure to dispute the allegations of the Complaint, the Panel presumes that Respondent lacks any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, Respondent is not authorized or licensed to register or use domain names incorporating Complainant’s BARBIE mark.  Also, the WHOIS information for the disputed domain name lists Respondent, Laura Lively, as the registrant; however, it fails to establish Respondent as someone commonly known by the <barbietraders.com> domain name.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

In addition, Respondent is competing with Complainant by selling Complainant’s products.  Use of a domain name confusingly similar a competitor’s mark is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Therefore, Respondent does not have rights or legitimate interests in the disputed domain name.  See Yahoo!, Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

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

Registration and Use in Bad Faith

The Panel infers that Respondent had actual or constructive knowledge of Complainant’s mark because the mark is registered with the U.S. Patent and Trademark Office, the domain name fully incorporates the mark and the disputed domain name directs Internet users to a website that sells Complainant’s products.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent’s use and registration of the <barbietraders.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii) because the domain name is confusingly similar to Complainant’s mark and directs Internet users to a website that competes with Complainant by selling Complainant’s own products.  See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  August 15, 2003

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