DECISION

Mattel, Inc. v. domainsforsalenow@hotmail.com a/k/a domain sales

Claim Number:  FA0308000187609

PARTIES

Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan.  Respondent is domainsforsalenow@hotmail.com a/k/a domain sales (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbieporn.net>, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 20, 2003; the Forum received a hard copy of the Complaint on August 25, 2003.

On August 27, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <barbieporn.net> 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 August 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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@barbieporn.net 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 September 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <barbieporn.net> domain name is confusingly similar to Complainant’s BARBIE mark.

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

3. Respondent registered and used the <barbieporn.net> domain name in bad faith.

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

FINDINGS

Complainant, Mattel, Inc., owns numerous trademark registrations with the U.S. Patent and Trademark Office for the BARBIE mark (e.g. U.S. Reg. No. 728,811, registered on March 20, 1962). Complainant uses its mark in commerce in connection with the sale and promotion of children’s dolls, toys, clothes, accessories, CD-ROM games and songs.

Respondent, domainsforsalenow@hotmail.com a/k/a domain sales, registered the <barbieporn.net> domain name on May 23, 2003, and is not licensed or authorized to use Complainant’s BARBIE mark for any purpose. After sending a cease-and-desist letter via email to Respondent which requested transfer of the disputed domain name, Complainant received an email that was nominally from Respondent’s technical support provider. This communication stated that it was willing to “entertain a reasonable offer” for the disputed domain name from Complainant while agreeing to remove all adult-oriented content from the domain name. Complainant replied to this communication, again requesting transfer of the disputed domain name. Respondent replied by again stating its willingness to “entertain a reasonable offer of monetary value” in exchange for the disputed domain name, going on to note “we both know that your expense of pursuing this through legal means would far out way [sic] the expense of simply being fair and paying for that which you want.”

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 though registration of the mark with the U.S. Patent and Trademark Office. See 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); 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).

Respondent’s <barbieporn.net> domain name is confusingly similar to Complainant’s BARBIE mark. Respondent has merely added the descriptive word “porn” to Complainant’s registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant’s mark and the domain name currently in dispute. 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).

Accordingly, the Panel finds that the <barbieporn.net> domain name is confusingly similar to Complainant’s BARBIE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Upon being notified of Complainant’s rights in the BARBIE mark, Respondent agreed to remove all content from the disputed domain name. Then, although Complainant never solicited sale of the disputed domain name registration from Respondent, Respondent twice offered to sell its registration to Complainant. From Respondent’s willingness to dispose of both the content at the disputed domain name and willingness to dispose of its entire domain name registration, the Panel concludes that Respondent’s main rationale in registering the domain name was to sell its registration to Complainant. The sale of a domain name registration to the rightful owner of a trademark that is incorporated into that domain name does not evidence rights or legitimate interests in a domain name, a conclusion that is reinforced by Respondent’s decision to leave the Complaint uncontested in this dispute. See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); 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).

Additionally, Respondent’s use of Complainant’s BARBIE mark to subject Internet users to adult-oriented content tarnishes Complainant’s mark. Such tarnishing use of Complainant’s mark would prevent Respondent from being able to support an argument that its use of the disputed domain name was for a “bona fide” business or that its use of the domain name was “fair.” Thus, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent, additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that the use of the disputed domain name in connection with pornographic images and links “tarnished and diluted” Complainant’s mark and this was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <barbieporn.net> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

On two separate occasions Respondent has attempted to sell its domain name registration to Complainant, the rightful owner of the BARBIE mark. Tellingly, Respondent alluded to the fact that any attempt to utilize legal means to protect Complainant’s trademark would “far out way[sic]” the expense that would be incured in simply purchasing the disputed domain name registration from Respondent. Respondent even went so far as to identify itself as “domainsforsalenow@hotmail.com” in its WHOIS contact information. Under these facts, the Panel infers that Respondent’s sole purpose in registering the disputed domain name was to sell that registration to Complainant, evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

The Panel thus finds that Respondent registered and used the <barbieporn.net> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  October 6, 2003

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