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Generic Top Level Domain Name (gTLD) Decisions |
Mattel, Inc. v. CTM a/k/a Kev Furber
Claim
Number: FA0403000245956
Complainant is Mattel, Inc. (“Complainant”), represented
by William Dunnegan of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is CTM a/k/a Kev Furber (“Respondent”), The Studio, 11 Boatswain Croft, The
Marina, Kingston Upon Hull HU1 2EJ, United Kingdom.
The
domain names at issue are <hotwheelsexperience.com> and
<hotwheelsexperience.net>, registered with CSL d/b/a
joker.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically March 15, 2004; the Forum
received a hard copy of the Complaint March
16, 2004.
On
March 17, 2004, CSL d/b/a joker.com confirmed by e-mail to the Forum that the
domain names <hotwheelsexperience.com> and
<hotwheelsexperience.net> are registered with CSL d/b/a joker.com and
that Respondent is the current registrant of the names. CSL d/b/a joker.com
verified
that Respondent is bound by the CSL d/b/a joker.com registration
agreement and thereby has 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 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 12, 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@hotwheelsexperience.com and postmaster@hotwheelsexperience.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
April 21, 2004, 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <hotwheelsexperience.com> and <hotwheelsexperience.net>,
are confusingly similar to Complainant’s HOT WHEELS mark.
2. Respondent has no rights to or legitimate
interests in the <hotwheelsexperience.com> and <hotwheelsexperience.net>
domain names.
3. Respondent registered and used the <hotwheelsexperience.com>
and <hotwheelsexperience.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant uses
the HOT WHEELS mark in conjunction with its business, which involves the sale
of scale model toys such as toy miniature
automobiles, race sets and
accessories. Complainant established in this proceeding using extrinsic proof
that it holds several registrations
for the HOT WHEELS mark with the U.S.
Patent and Trademark Office (“USPTO”), including Reg. Nos. 884,563 and
1,810,905 (registered
on January 20, 1970 and December 14, 1993, respectively).
Respondent
registered the <hotwheelsexperience.com> and <hotwheelsexperience.net>
domain names September 5, 2000. The
domain names resolve to a commercial website that provides risk management
services for corporate drivers.
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 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.
Complainant has
established in this proceeding that it has rights in the HOT WHEELS mark
through registration with the USPTO. 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).
The domain names
registered by Respondent, <hotwheelsexperience.com> and <hotwheelsexperience.net>,
are confusingly similar to Complainant’s HOT WHEELS mark because the domain
names fully incorporate the mark and merely add the
generic word
“experience.” The addition of the
generic word “experience” does not distinguish the domain names from
Complainant’s mark. 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 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).
Moreover, the
omission of the space between the words of Complainant’s mark is irrelevant in
determining whether the domain names
are confusingly similar to Complainant’s
mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Also, the
addition of the generic top-level domains “.com” and “.net” to the mark is
irrelevant in determining whether the domain
names are 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).
The Panel finds
the Policy ¶ 4(a)(i) has been satisfied.
Respondent did
not contest the allegations of the Complaint; therefore, the Panel presumes
that Respondent lacks rights and legitimate
interests in the domain names. See 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); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no
legitimate interests in the domain names).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
domain names. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the domain names
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).
Moreover,
Respondent takes opportunistic advantage of the goodwill associated with
Complainant’s mark because the domain names are
confusingly similar to the mark
and resolve to a commercial website.
The Panel presumes that Respondent commercially benefits by redirecting
Internet users to the commercial website.
Thus, Respondent’s use of the domain names 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 Black & Decker Corp. v.
Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding
that Respondent’s use of the disputed domain name to redirect Internet users
to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral
fee did not evidence rights
or legitimate interests in the domain name).
The Panel finds
the Policy ¶ 4(a)(ii) has been satisfied.
The Panel
presumes that Respondent benefits economically by redirecting Internet users to
the commercial website via the misleading
domain names. Respondent’s use of domain names that
confusingly similar to Complainant’s mark for commercial gain constitutes bad
faith registration
and use pursuant to Policy ¶ 4(b)(iv). See 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);
see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when
the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent
is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website
<iwin.com>,
presumably receiving a portion of the advertising revenue
from the site by directing Internet traffic there, thus using a domain
name to
attract Internet users for commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hotwheelsexperience.com> and <hotwheelsexperience.net>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 5, 2004.
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