DECISION

Mattel, Inc. v. Richard Robert

Claim Number:  FA0405000271644

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Richard Robert (“Respondent”), 12 Rue Chateauneuf, Nice France 06000.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <caligirlbarbie.com>, registered with Namebay.

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 13, 2004; the Forum received a hard copy of the Complaint on May 14, 2004.

On May 17, 2004, Namebay confirmed by e-mail to the Forum that the domain name <caligirlbarbie.com> is registered with Namebay and that Respondent is the current registrant of the name. Namebay has verified that Respondent is bound by the Namebay 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 May 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 9, 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@caligirlbarbie.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 June 18, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <caligirlbarbie.com> domain name is confusingly similar to Complainant’s BARBIE mark.

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

3. Respondent registered and used the <caligirlbarbie.com> 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 (“USPTO”) for the BARBIE mark (e.g. U.S. Reg. No. 689,055, registered on December 1, 1959). Complainant uses its mark in connection with children’s dolls, toys, clothes, accessories, and related goods.

Respondent, Richard Robert, registered the <caligirlbarbie.com> domain name on February 13, 2004.  The domain name resolves to a website that reads “THIS DOMAIN NAME IS YOURS, BUY IT NOW.”

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 as established by its 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).

While the Complainant’s burden of proof is low under Policy ¶ 4(a)(i), Complainant still must offer some proof other than stating that the domain name in question is confusingly similar to Complainant’s mark.  See Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

Complainant has not made a prima facie allegation of confusingly similarity.  Complainant merely alleges the following:

At the time of the filing of this complaint, the disputed domain name was registered to Richard Robert.  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, § 1125(d). (Compl. p. 4.)

The Panel finds that the Complaint does not address the narrow area of abusive domain name registrations, but, rather, general trademark law, and it is outside the scope of the UDRP.  See AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement "are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else"); see also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts).

The Panel finds that Complainant has not established Policy ¶ 4(a)(i).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

James A. Crary, Panelist

Dated:  June 30, 2004

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