DECISION

Mattel, Inc. v.  Harvie.net a/k/a John Harvie

Claim Number: FA0404000257692

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Harvie.net a/k/a John Harvie (“Respondent”), 938 Las Palmas Drive, Santa Clara, CA 95051.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hotwheelz.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.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 20, 2004; the Forum received a hard copy of the Complaint on April 21, 2004.

On April 20, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <hotwheelz.com> is registered with Enom, Inc. and that the 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 April 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 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@hotwheelz.com by e-mail.

A timely Response was received and determined to be complete on May 12, 2004.

A timely Additional Submission was received from Complainant and was determined to be complete on May 17, 2004.

A timely Additional Submission was received from Respondent and was determined to be complete on May 19, 2004.

On May 27, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

            1.            The disputed domain name is <hotwheelz.com>.

2.            Complainant owns the trademark for HOT WHEELS and has received U.S. Certificate of Trademark Registration Nos. 843,156 (first used in commerce July 20, 1967) for scale model toys; 884,563 for toy miniature automobiles and accessories therefore; and 1,810,905 (first used in commerce December 1982) for toy vehicles and race sets.

3.            The disputed domain name is confusingly similar to and dilutive of Complainant’s registered trademark for HOT WHEELS.

4.            Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the name HOT WHEELS and has acquired no trademark or service mark rights to the domain name <hotwheelz.com>.

5.            Respondent has not made a legitimate non-commercial or fair use of the disputed domain name.  The URL address <hotwheelz.com> is a website through which Respondent posted correspondence and articles.

6. Respondent has registered and used the disputed domain name in bad faith        because registration of the domain name blocks Complainant from using the domain name for its own business.  In connection with its HOT WHEELS line of products, Complainant uses many domain names, including, but not limited to, <hotwheels.com> and <hotwheelscollectors.com>.

7.            Respondent has used the domain name <hotwheelz.com> with the intent to trade on the goodwill Complainant has earned in its HOT WHEELS products, and to enhance the commercial value of its own services.  Respondent has damaged the reputation, business and goodwill of Complainant.

8.            By using the Internet domain name <hotwheelz.com>, Respondent has diluted, and will continue to dilute, the distinctive quality of the HOT WHEELS trademark by lessening its capacity to identify Complainant’s products and services in violation of the Federal Anti-Dilution Act, 15 U.S.C. section 1125(c).  Respondent’s use of the domain name <hotwheelz.com> has infringed and will continue to infringe the HOT WHEELS trademark in violation of 15 U.S.C. section 1114(a).

9.            Complainant requests that the Panel issue a decision that the domain name registration be transferred.  ICANN Rule 3(b)(x); ICANN Policy ¶4(i).

B. Respondent

            1.            Respondent is John Harvie, Santa Clara, California.

2.            The domain name <hotwheelz.com> does not include Complainant’s trademark and is not confusingly similar to the mark.

3.            Complainant underestimates the average Internet user’s ability to distinguish between HOT WHEELS and <hotwheelz.com>.  If one were to ask one hundred Internauts to navigate to the HOT WHEELS website, one hundred Internauts would navigate to Complainant’s website.

4.            Respondent does have rights and a legitimate interest in the disputed domain name for he is an automobile enthusiast and has on occasion been called “hot wheels” due to the appearance of the wheels on his automobile.  The term “hot wheels” is used to describe Respondent’s wheels as being “hot” – a slang term for “attractive.”

5.            Respondent purchased the disputed domain on an Internet auction site with the full intention of creating a website documenting the restoration of a classic automobile.  The website Complainant is referencing is nothing more than a web template from Microsoft’s FrontPage.  Respondent used this template for the sole purpose of testing the usability of the web hosting purchased.  Soon after, the template was available online, Complainant contacted Respondent via mail.  Although Respondent has done nothing wrong, Respondent felt that until issues with Complainant were resolved, nothing further would be done to the website <hotwheelz.com>.  The <hotwheelz.com> domain name has never and will never include, make reference to, or depict Complainant’s trademark.

6.            Respondent did not register nor use the disputed domain name in bad faith.  Respondent’s registration of the disputed domain name does not block Complainant from using any domain name that includes Complainant’s HOT WHEELS trademark should be <hotwheelz.net>.  Respondent has only registered <hotwheelz.com>.  There is a <hotwheels.net> domain name to which Complainant has not objected after Complainant’s logo was removed.

7.            Respondent has never used the domain name <hotwheelz.com> for commercial purposes.  Furthermore, Respondent will never use the disputed domain name <hotwheelz.com> for commercial purposes.  Complainant’s claim of damages to Complainant’s reputation has no basis.

8.            The disputed domain name <hotwheelz.com> does not include Complainant’s trademark.

9.            Respondent requests that the Panel issue a decision that Respondent is allowed to keep ownership of the domain name <hotwheelz.com>.

C. Additional Submission by Complainant

1.            The disputed domain name is confusingly similar because it is a phonetically identical variation of Complainant’s domain name <hotwheels.com>.

2.            Respondent has failed to demonstrate any legitimate interest in the disputed domain name.

3.            Respondent has registered and used the disputed domain in bad faith because it does not deny that it was aware of Complainant’s famous HOT WHEELS trademark at the time it purchased the domain name <hotwheelz.com> at an online auction.  Purchase of such a confusingly similar domain name, with no rights in that domain name, suggests bad faith.

4.            Respondent’s registration and use of the disputed domain name <hotwheelz.com> is “typosquatting” – the “z” being adjacent to the “s” on the keyboard.  This practice of “typosquatting” has been recognized as a bad faith use of a domain name.

5.            Complainant did demand the transfer of the domain name <hotwheelz.net>.

D. Additional Submission by Respondent

1.            The phonetically similarity of the disputed domain name to Complainant’s mark is immaterial.  This is because a reasonable Internet user would navigate to <hotwheels.com> when asked verbally to navigate to <hotwheels.com>.  Internet users arriving at <hotwheelz.com> would have done so by specifically and willingly typing <hotwheelz.com>.

2.            Complainant is claiming ownership of the generic words “hot” and “wheels.”  Furthermore, Complainant is trying to claim ownership of alternative spellings of generic words – “hot” and “wheels.”  Respondent’s domain name <hotwheelz.com> simply is not included in Complainant’s registered mark.  Complainant’s rights in <hotwheels.com> should not be allowed to infringe on Respondent’s rights in <hotwheelz.com>.

3.            Complainant’s use of the term “typosquatting” has no factual basis whatsoever and is completely erroneous.  Respondent has absolutely no history of “typosquatting.”  This is clearly a “last ditch” attempt by Complainant to label Respondent as someone of the moral character of a cybersquatter.

4.            Respondent is making a legitimate noncommercial and fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish Complainant’s marks.

FINDINGS AND DETERMINATIONS

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; and

(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.

Identical and/or Confusingly Similar

There is no question but that the disputed domain name is confusingly similar to Complainant’s federally registered marks.

First, the marks carry with them a presumption that they are valid and inherently distinctive.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2000) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired some 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.)  This disposes of Respondent’s “generic” contention, for it has not carried its burden here.

Second, the disputed domain name is phonetically identical to Complainant’s mark.  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also, YAHOO!, Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

Finally, the disputed domain name <hotwheelz.com> is confusingly similar to Complainant’s HOT WHEELS mark because the domain name merely misspells the mark by replacing the letter “s” with the letter “z.”  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davematthewsband.com>, are common misspellings and therefore confusingly similar).

It is found and determined that the disputed domain name is confusingly similar to Complainant’s marks.

Rights or Legitimate Interests

Complainant’s trademarks were registered with the United States Patent and Trademark Office long before Respondent registered the disputed domain name and, thus, Respondent has rights and a legitimate interest in the disputed domain name only if its registration and use of the domain name was not in bad faith.

The Anticybersquatting Consumer Protection Act (“ACPA”) [15 U.S.C. section 1125(d)] protects owners of a famous mark [as here] from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.

As will be seen hereafter, the Panel has determined the difficult question of the required bad faith by finding that it is not present here.[1]

Registration and Use in Bad Faith

Paragraph 4b of the Policy sets forth four circumstances, without limitation, which are evidence of the registration and use of a domain name in bad faith.

The most pertinent here of the listed circumstances is subparagraph (iv) which provides:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”  (Emphasis supplied.)

The essential requirement of “for commercial,” with respect to the Respondent, has not been established by Complainant.

Moreover, Paragraph (c) of the Policy lists three circumstances, without limitation, which will demonstrate the rights and legitimate interests by Respondent to the disputed domain name.  One of the defenses is set forth in subparagraph (iii):

“you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant has not demonstrated a commercial or unfair use of the disputed domain name.

Respondent repeatedly has asserted and pledged that it will utilize the disputed domain name in a noncommercial, nontrademark manner.  In fact, Respondent posted only correspondence and articles on its website prior to this proceeding. 

If there is only noncommercial, nontrademark use and the contrary has not been shown by Complainant, there can be no trademark infringement or the demonstration of bad faith in a domain name dispute.

The Panel finds that there is a noncommercial, nontrademark use of the disputed domain name.  It has been held that when a nontrademark use is made that does not depend for its value on the existence of the trademark, it is then appropriate to use the trademark of another’s domain.  See U. S. Dept. of the Navy NAVSEA v. NAVYWEB, FA 105977, May 21, 2002; see also Brookfield Communications, Inc. v. W. Coast Entm’t, [1999] USCA9 225; 174 F.3d 1036, 1065-1066 (9th Cir. 1999); see also Avery Dennison Corp. v. Sumpton, [1999] USCA9 436; 189 F.3d 868 (9th Cir. 1999); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (finding no bad faith despite infringement on Complainant’s registered trademark when site is primarily for personal, noncommercial purpose).

It is found and determined, accordingly, that Respondent did not register or use the disputed domain name in bad faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy (i.e., the required bad faith registration and use is lacking), the Panel concludes that relief shall be DENIED.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: June 18, 2004

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