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Generic Top Level Domain Name (gTLD) Decisions |
Mattel, Inc. v. KPF, Inc.
Claim Number: FA0403000244073
PARTIES
Complainant
is Mattel, Inc. (“Complainant”),
represented by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is KPF, Inc. (“Respondent”),
P.O. Box 271193, Oklahoma City, OK 73137.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bellemodebarbie.com>,
registered with Network Solutions, 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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 4, 2004; the Forum received
a hard copy of the
Complaint on March 5, 2004.
On
March 10, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <bellemodebarbie.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
March 10, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of March 30,
2004 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@bellemodebarbie.com by e-mail.
A
timely Response was received and determined to be incomplete on March 30, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on April 5, 2004.
A
timely Additional Submission was received from Respondent but was determined to
be deficient.
On April 15, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
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;
(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.
This
Complaint is based on the following factual and legal grounds: ICANN Rule
3(b)(ix):
a. Complainant
owns the trademark for BARBIE and has received U.S. Certificate of Trademark
Registration Nos. 728,811 issued March 20,
1962 and renewed on March 20, 1982;
741,208 issued November 27, 1962 and renewed on November 27, 1982; 741,649 issued
on December
4, 1962 and renewed on December 4, 1982; 768,331 issued on April
21, 1964 and renewed on April 21, 1984; 768,397 issued on April
21, 1964 and
renewed on April 21, 1984; 772,298 issued on June 30, 1964 and renewed on June
30, 1984; 810,106 issued on June 21,
1966 and renewed on June 21, 1986; 814,091
issued on August 30, 1966 and renewed on August 30, 1986; 814,995 issued on
September
13, 1966 and renewed on September 13, 1986; 816,601 issued on October
11, 1966 and renewed on October 11, 1986; 817,200 issued on
October 25, 1966
and renewed on October 25, 1986; 1,000,125 issued on December 24, 1974 and
renewed on December 24, 1994; 1,041,587
issued on June 22, 1976 and renewed on
June 22, 1996; 1,300,766 issued on October 16, 1984; 1,693,139 issued on June
9, 1992; 1,746,477
issued on January 12, 1993; 1,754,535 issued on February 23,
1993; 1,769,285 issued on May 4, 1993; 1,773,571 issued on May 25, 1993;
1,775,637 issued on June 8, 1993; 1,795,876 issued on September 28, 1993;
1,710,196 issued on August 25, 1992; 1,760,729 issued on
March 23, 1993;
1,947,330 issued on January 9, 1996; and 1,995,873 issued on August 20, 1996.
These registrations are valid and subsisting.
b. At
the time of the filing of this Complaint, the disputed domain name was
registered to KPF, Inc. The disputed
domain name is confusingly similar to and dilutive of Complainant’s registered
trademark for BARBIE within the meaning
of the Anticybersquatting Consumer
Protection Act of 1999, 15 U.S.C. § 1125(d).
c. Respondent
is not commonly known by the name Barbie and has acquired no trademark or
service mark rights to the domain name <bellemodebarbie.com>.
d.
Respondent
has not made a legitimate non-commercial or fair use of the domain name
<barbie1004.com>. The URL address
<bellemodebarbie.com> advertises
and sells clothing for fashion dolls.
e.
The
registration of this domain name blocks Complainant from using this domain name
for its own business. In connection
with its BARBIE line of products, Complainant uses many domain names,
including, but not limited to, <barbie.com>,
<barbiecollectibles.com>, and <barbiecollectiblesstore.com>.
f. Respondent has used the domain <bellemodebarbie.com> with the intent to trade on the
goodwill Complainant has earned in its BARBIE products, and to enhance the
commercial value of their
own services.
Respondent has damaged the reputation, business and goodwill of
Complainant.
g. By using the domain name <bellemodebarbie.com>, Respondent has
diluted, and will continue to dilute, the distinctive quality of the BARBIE
trademark by lessening its capacity to
identify Complainant’s products and
services in violation of the Federal Anti-Dilution Act, 15 U.S.C. § 1125(c). Respondent’s use of the domain name <bellemodebarbie.com>
has
infringed and will continue to infringe the BARBIE trademark in violation of 15
U.S.C. § 1114(a).
h. By letter and e-mail dated June 12,
2002 and April 30, 2003, copies of which are annexed as Exhibit C, Complainant
demanded that Respondent
transfer ownership of the domain name to
Complainant.
B.
Respondent
The
subject domain name is no longer being used for my website. I have registered a
new domain name, <bellemodedolls.com>. Moreover,
original registration of
<bellemodebarbie.com> expired in 2002, and I did not renew
registration of it at that time. There was never any intention on my part to
come into conflict
with any of the legitimate rights of the Mattel Corporation;
my intention was merely to facilitate the location of my website for
interested
parties. This being the case, my voluntary relinquishment of the domain name of
<bellemodebarbie.com> should be construed only as an
indication of my unwillingness to enter into any sort of dispute with Mattel,
regardless of the merit,
or lack of merit in their claim. Please note that the
correct e-mail address is: ktfinc@earthlink.net. It was previously,
ktfinc@email.msn.com.
At no time have I used kpfinc@email.msn.com, and to my
knowledge, there has never been an entity named KPF, Inc. Any and all
communications
directed to me at the e-mail address of kpfinc@email.msn.com
were incorrectly addressed and were never received by me.
C.
Additional Submissions
Respondent, in
her response, incorrectly argues that she is no longer the registrant of <bellemodebarbie.com>, that there
was never an entity by the name KPF, Inc., and that the website is not
operational. However, a search of the
WHOIS database at Networksolutions.com, the registrar of the domain name,
reveals that <bellemodebarbie.com> is in fact registered to KPF, Inc.
and that it is not due to expire until March 25, 2005. Furthermore, a visit to <bellemodebarbie.com>
reveals that the site is, in fact, still operational.
Case
No.FA0403000244073 Attention: M. Schaber This is my fifth attempt to contact
you by e-mail. I have also tried to download your
response forms on-line, but
something is not working, because I do [sic] not receive the forms. RESPONSE:
The subject domain name
is no longer being used for my website. I have
registered a new domain name, <bellemodedolls.com>. Moreover, original
registration
of <bellemodebarbie.com> expired in 2002, and I did not renew
registration of it at that time. There was never any intention on my part to
come into conflict
with any of the legitimate rights of the Mattel Corporation;
my intention was merely to facilitate the location of my website for
interested
parties. This being the case, my voluntary relinquishment of the domain name of
<bellemodebarbie.com> should be construed only as an
indication of my unwillingness to enter into any sort of dispute with Mattel,
regardless of the merit,
or lack of merit in their claim. Please note that the
correct e-mail address is: ktfinc@earthlink.net. It was previously,
ktfinc@email.msn.com.
At no time have I used kpfinc@email.msn.com, and to my
knowledge, there has never been an entity named KPF, Inc. Any and all
communications
directed to me at the e-mail address of kpfinc@email.msn.com
were incorrectly addressed and were never received by me. /Kathy Fisher/
KTF,
Inc. P.O. Box 271193 Oklahoma City, OK 73137 ktfinc@earthlink.net FAX No. NONE
Respondent
then went on to indicate Network Solutions must have “obviously” misunderstood
Respondent’s contact information when the
domain name was originally registered
in 2000.
FINDINGS
The Panel finds for a variety of reasons
that:
(1)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(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.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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.
This
case presents a number of interesting issues.
Respondent’s failure to include the certification
statement required by ICANN Rule 5(b)(viii) makes the Response (and
supplemental
Response) deficient. This
fact, coupled with the incorrect whois
information and Respondent’s concession on the merits, causes this Panel to
decline to accept Respondent’s Response (and supplemental
Response) in reaching
the merits of this case. See Talk
City Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight would be afforded to
the facts alleged in Respondent’s deficient submission,
partly because it “did
not contain any certification that the information contained in the e-mail was,
‘to the best of Respondent’s
knowledge complete and accurate’” in accordance
with Rule 5(b)(viii)).
Any
person who registers a domain name has a continuing duty to maintain up to date
whois information for their
domain name. Somehow the whois information for this domain has NEVER
been correct since 2000. This is
inexcusable and was not explained by Respondent. Even so, Respondent (a “corporation” which does not exist) did
receive actual notice of this proceeding.
Respondent
concedes voluntarily relinquishing the domain name. Somehow, this relinquishment has not been effectuated. The Panel notes Respondent’s difficulties in
sending e-mail and in controlling its website, suggesting Respondent is
“technologically
challenged.” This
Panel will give effect to Respondent’s intentions that Respondent failed to
carry out.
In
an abundance of caution, this Panel will review the various factors under the
ICANN Policy, admittedly drawing each inference in
favor of Complainant and
against Respondent in light of the very peculiar circumstances of this case.
Complainant
established rights in the BARBIE mark through registration with the U.S. Patent
and Trademark Office (“USPTO”).
Complainant holds several registrations with the USPTO for the mark,
including Reg. Nos. 728,811 and 741,208 (registered on March
20, 1962 and
November 27, 1962, respectively). 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
<bellemodebarbie.com> domain name is confusingly similar to
Complainant’s BARBIE mark. The Panel
finds the domain name is confusingly similar to Complainant’s mark because the
domain name fully incorporates the mark and
adds the generic words “belle” and
“mode.” See Am. Online, Inc. v.
Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive
terms “traffic school,” “defensive driving,” and “driver improvement”
did not
add any distinctive features capable of overcoming a claim of confusing
similarity); see also Am.
Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding
that the addition of the generic word “Net” to Complainant’s ICQ mark, makes
the <neticq.com>
domain name confusingly similar to Complainant’s mark).
The addition of the generic top-level domain
“.com” is irrelevant in determining whether the <bellemodebarbie.com> domain
name is confusingly similar to Complainant’s mark. See Pomellato S.p.A
v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); see also 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).
Respondent lacks rights and legitimate interests in
the <bellemodebarbie.com>
domain
name because Respondent is not commonly known by the domain name. Respondent lacks rights and legitimate
interests in the 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Respondent’s
<bellemodebarbie.com> domain name resolves to a website that sells
clothing for fashion dolls (including the famous “Barbie” doll). Respondent is using a domain name
confusingly similar to Complainant’s mark for commercial gain. Commercial use of a domain name confusingly
similar to another’s mark does not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to
profit using
Complainant’s mark by redirecting Internet traffic to its own website); see
also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20,
2002) (finding that because the VIAGRA mark was clearly well-known at the time
of Respondent’s registration
of the domain name it can be inferred that
Respondent is attempting to capitalize on the confusion created by the domain
name’s similarity
to the mark).
Respondent
lacks rights and legitimate interests in the <bellemodebarbie.com> domain
name because Respondent stated in its Response that it has relinquished its
rights in the domain name. See Taco Bell Corp. v. Tango Bella,
D2000-1229 (WIPO Dec. 12, 2000) (transferring the domain name where Respondent
agreed that it had no rights in the domain name);
see also Colgate-Palmolive Co. v. Domains For Sale,
FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer
the domain name at issue to Complainant, as reflected
in its Response, is
evidence that it has no rights or legitimate interests in the domain
name). Such a declaration need not be
under oath.
Respondent’s assertion that it is no
longer the registrant of the <bellemodebarbie.com> domain name is
demonstrably false because the WHOIS information clearly shows Respondent is
the registrant and states the registration
does not expire until March 25,
2005.
Respondent
registered and used the <bellemodebarbie.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name is confusingly similar to
Complainant’s mark and is
used for commercial gain by taking advantage of the
goodwill associated with the mark. See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Respondent
had actual or constructive knowledge of Complainant’s mark because the mark is
famous and is registered with the United
States Patent and Trademark Office
(and is even mentioned on the website as a trademark belonging to
Complainant). Registration of a domain
name confusingly similar to a mark, despite knowledge of the mark holder’s
rights, is evidence of bad faith
registration pursuant to 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
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.”); 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’s statement that it has
relinquished rights in the <bellemodebarbie.com> domain name is
evidence that Respondent registered and used the domain name in bad faith. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001)
(Respondent’s registration and use of the domain name at issue coupled with its
expressed
willingness to transfer the name amply satisfies the bad faith requirements
set forth in ICANN Policy); see also Global
Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001)
(finding Respondent’s failure to address Complainant’s allegations coupled with
its willingness
to transfer the names is evidence of bad faith registration and
use).
Failure to provide correct whois information (whether contact
information or the domain owner’s correct name) is also strong evidence of bad
faith. See Home Dir. v. HomeDirector, D2000-0111 (WIPO Apr.
14, 2000); see also Agent Host Co v. Host Dot Com Invs., AF-00343
(eRes. Oct. 16, 2000).
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 <bellemodebarbie.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: April 26, 2004
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