DECISION

Mattel, Inc. v. Harems Internet Services, Inc.

Claim Number: FA0404000262995

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Harems Internet Services, Inc. (“Respondent”), represented by Myles Hare, 331 Elmwood Drive, Suite 4-259, Moncton, NB Canada E1A 1X6.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbiebelle.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

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.

Hon. Judge Nelson A. Diaz (Retired) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 23, 2004; the Forum received a hard copy of the Complaint on April 26, 2004.

On April 26, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <barbiebelle.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 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@barbiebelle.com by e-mail.

A timely Response was received and determined to be complete on May 19, 2004.

A timely Additional Submission was received from Complainant and was determined to be complete on May 21, 2004.

A timely Additional Submission was received from Respondent and was determined to be complete on May 24, 2004.

On June 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Judge Nelson A. Diaz (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

(1)  Complainant contends that Respondent’s domain name <barbiebelle.com> is identical or confusingly similar to trademarks in which Complainant has rights;

(2)  Complainant contends that Respondent has no rights or legitimate interest in the disputed domain; and

(3)  Complainant contends that Respondent registered and is using the domain name in bad faith.

B. Respondent

(1)  Respondent denies the claims.  Respondent disputes that the domain name <barbiebelle.com> is confusingly similar to Complainant’s trademarks, apparently based on the fact that Respondent’s website occasionally references “Barbie Belle,” a famous porn star.

(2)  Respondent contends it does have a legitimate interest in the disputed domain; and

(3)  Respondent denies that it has acted in bad faith in registering and using the domain name. 

C. Additional Submissions

In subsequent submissions, both Complainant and Respondent clarified their respective contentions.  The Panel reviewed the additional submissions and considered them in the decision below.

FINDINGS

The Panel finds that: (a) <barbiebelle.com> is identical or confusingly similar to Complainant’s registered trademarks; (b) Respondent has no legitimate interest in the domain name; and (c) Respondent registered the domain name in bad faith and is using the domain name in bad faith.  For the reasons explained below, the Panel orders that the domain name be transferred to Complainant.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant asserts that it holds rights in various BARBIE marks through several registrations with the U.S. Patent and Trademark Office (“USPTO”), including, inter alia, Reg. Nos. 689,055 and 728,811 (registered on December 1, 1959 and March 20, 1962, respectively).  Federal registration of a mark is prima facie evidence of validity, and creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of rebutting this assumption.  Despite Respondent’s claim that “Barbie” is either a given name or is a nickname of the given name Barbara, Respondent has not rebutted the presumption of inherent distinctiveness.  Furthermore, Respondent’s implication that Complainant’s mark is generic because it is a common nickname or given first name also carries little weight.  The evidence of record clearly demonstrates that BARBIE is not generic for its goods and services, and that Respondent is using the distinctiveness of Complainant’s mark to drive Internet users to its own pornographic sites.

Under Paragraph 4(a) of the Policy, it is clear that the domain <barbiebelle.com> is confusingly similar to Complainant’s registered BARBIE marks.  The Panel notes that the domain name fully incorporates the mark and merely adds the descriptive term “belle.”  See Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).  The fact that Complainant also uses “belle” in conjunction with its registered marks, and has done so for approximately 12 years, further buttresses the finding of confusing similarity.

It is axiomatic that the addition of the generic top-level domain “.com” is irrelevant in determining whether the <barbiebelle.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).

The Panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainant’s registered BARBIE marks.

Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interests in the domain name includes:

(1) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

In support of its claim, Complainant argues that Respondent has no rights or legitimate interests in the domain name <barbiebelle.com> because Respondent is not commonly known by the name “Barbie Belle.”  Notwithstanding Respondent’s assertions that Barbie Belle is a “famous porn star” and that Respondent uses <barbiebelle.com> to direct Internet surfers searching for Ms. Belle to a website apparently related to Respondent, there is no evidence of record that Respondent is in anyway affiliated with the alleged Ms. Belle or any goods or services she may provide.  Accordingly,  pursuant to Policy ¶ 4(c)(ii), Respondent has not shown that it has rights and legitimate interests in the domain name.  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).

Complainant further contends that Respondent lacks rights and legitimate interests in the <barbiebelle.com> domain name because the domain name resolves to a pornographic website.   Respondent counters that it has rights and legitimate interests in the <barbiebelle.com> domain name because users may use the domain name as the means of accessing a website that features the porn star Barbie Belle.  This argument is specious at best.  There is no evidence of record that Barbie Belle is affiliated with, or has somehow licensed, Respondent to use her likeness. 

In any event, the Panel finds that, as used by Respondent, the domain name does tarnish Complainant’s mark by directing users to a pornographic website which is completely unrelated to <barbiebelle.com>.  It is well-established that use of a domain name for linking or pass throughs  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 ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); 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);  see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

Based upon the evidence, the Panel finds that Complainant has met its burden of proof with regard to Paragraph 4(c) of the Policy.

Registration and Use in Bad Faith

Complainant argues that Respondent’s use of the <barbiebelle.com> domain name to link to a pornographic website demonstrates bad faith pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name).

Respondent, on the other hand, contends that its registration and use of the <barbiebelle.com> domain name does not amount to bad faith because Respondent had rights and legitimate interests in the domain name prior to the dispute.  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business).

Ultimately, Respondent’s contentions are not persuasive.  The evidence clearly shows a pattern of registering domain names similar to Complainant’s.  Respondent is not absolved of bad faith in this particular instance merely because Respondent did transfer other, unrelated domain names to Complainant.  In fact, the mere fact that Respondent received fees in the other case strongly suggests Respondent is receiving click-through fees in the instant case.  That alone is enough to support a finding of bad faith.  See 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); see also 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).

From the evidence of record, the Panel finds that Respondent was using a domain name confusingly similar to Complainant’s mark for commercial gain by receiving click-through fees for redirecting Internet users to a pornographic website, and thus concludes that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). 

Finally, Respondent asserts that Complainant has engaged in reverse domain name hijacking but Respondent merely makes the assertion without expanding on how Complainant has engaged is such activity.  The Panel considered the claim, and dismisses it.   Complainant has satisfied all the prongs of the test set forth under the Policy.  As such, the Panel finds that Complainant brought the Complaint in good faith and did not engage in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.

Accordingly, it is Ordered that the <barbiebelle.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Judge Nelson A. Diaz (Retired), Panelist
Dated: June 14, 2004

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