DECISION

Mattel, Inc. v. Domain Admin a/k/a ******It's all in the name ******

Claim Number:  FA0403000248936

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Domain Admin a/k/a ******It's all in the name****** (“Respondent”), 2555 Boca Rio Drive, Boca Raton, FL 33433.

REGISTRAR AND DISPUTED DOMAIN NAME

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

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 22, 2004; the Forum received a hard copy of the Complaint on March 23, 2004.

On March 25, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wwwmatchbox.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 March 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 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@wwwmatchbox.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 26, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <wwwmatchbox.com> domain name is confusingly similar to Complainant’s MATCHBOX mark.

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

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

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

FINDINGS

Complainant asserts that it registered the MATCHBOX mark with the U.S. Patent and Trademark Office (“USPTO”) on September 24, 1974 (Reg. No. 933,794). 

Respondent registered the <wwwmatchbox.com> domain name on March 22, 2000.  The domain name resolves to a website that advertises that the domain name registration is for sale and provides links to other car related websites such as “Car Insurance,” “Finance & Mortgage,” and “Buy Candles.” 

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

To satisfy the requirements of Policy ¶ 4(a)(i) Complainant must prove (1) rights in a trademark or service mark and (2) that the disputed domain name is identical or confusingly similar to the mark.

The Complaint addresses the first element of Policy ¶ 4(a)(i) as follows:

a. Complainant owns the trademark for MATCHBOX and has received U.S. Certificate of Trademark Registration No. 993,794 issued on September 24, 1974 and renewed on September 24, 1994. This registration is valid and subsisting.  A copy of the certificate of registration is attached as Exhibit A.

The language quoted above is all inclusive of Complainant’s argument that it has rights in the MATCHBOX mark.  Thus, Complainant asserts that it has established rights in the MATCHBOX mark through registration with the USPTO.  However, the registration documents provided in the Complaint list the holder of the mark as Matchbox Toys Limited.  Complainant has not provided documentation showing a link to Matchbox Toys Limited. 

As shown above, the Complaint does not assert nor does it provide evidence that Complainant has common law rights in the mark.  Therefore, the Panel finds that Complainant has failed to meet its burden of proof pursuant to Policy ¶ 4(a)(i).  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”); see also NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying Complaint because Complainant was not the owner of the trademarks); see also CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA 155888 (Nat. Arb. Forum June 3, 2003) (holding that as Complainant provided no evidence to the Panel that it has any arrangement to represent the actual trademark holder, or that any rights in the relevant trademark had been assigned or licensed to Complainant, Complainant did not have standing to bring a claim under the UDRP).

Because Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding, Complainant's failure to prove the elements listed in Policy Paragraph 4(a)(i) means that the Panel need not consider whether Complainant has proven the remaining elements contained in Policy Paragraphs 4(a)(ii) and (iii).  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.

James A. Carmody, Esq., Panelist

Dated:  May 7, 2004

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