DECISION

Mattel, Inc. v. Kim Hyun Jung

Claim Number:  FA0404000256978

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Kim Hyun Jung (“Respondent”), Daegu Bookgu Taejugdong, 702260, Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbiestyle.net>, registered with Gabia, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 15, 2004; the Forum received a hard copy of the Complaint on April 16, 2004.  The Complaint was submitted in both Korean and English.

On April 18, 2004, Gabia, Inc. confirmed by e-mail to the Forum that the domain name <barbiestyle.net> is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. verified that Respondent is bound by the Gabia, Inc. 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 April 21, 2004, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 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@barbiestyle.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 May 24, 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 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.

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <barbiestyle.net>, is confusingly similar to Complainant’s BARBIE mark.

2. Respondent has no rights to or legitimate interests in the <barbiestyle.net> domain name.

3. Respondent registered and used the <barbiestyle.net> domain name in bad faith.

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

FINDINGS

Complainant holds several registrations for the BARBIE mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 689,055 and 728,811 (registered on December 1, 1959, and March 20, 1962, respectively).

Respondent registered the <barbiestyle.net> domain name April 8, 2003.  The domain name redirects Internet users to a commercial website for Wisecart, which is located at <wisecart.co.kr/pr/>. 

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights in the BARBIE 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 and creates a presumption that may be rebutted that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <barbiestyle.net> domain name is confusingly similar to Complainant’s BARBIE mark because the domain name fully incorporates the mark and merely adds the generic word “style.”  The addition of the generic word “style” does not distinguish the domain name 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).

Furthermore, the addition of the generic top-level domain “.net” to the mark is irrelevant in determining whether the <barbiestyle.net> 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 finds the Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established with extrinsic proof in this proceeding that it has both rights to and legitimate interests in the mark contained in its entirety within the domain name that Respondent registered. Respondent did not submit a Response and in such cases, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

In addition, Respondent failed to contest the allegations of the Complaint; therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the <barbiestyle.net> domain name.  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 interest in the domain names).

Furthermore, nothing in the record establishes that Respondent is commonly known by the <barbiestyle.net> domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name 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).

Complainant asserts that Respondent’s <barbiestyle.net> domain name resolves to a commercial website.  Due to Respondent’s failure to contest this allegation, the Panel accepts the allegation as true.  Thus, Respondent takes opportunistic advantage of the goodwill associated with Complainant’s mark because the domain name is confusingly similar to the mark and resolves to a commercial website.  Respondent’s commercial use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not 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.

Registration and Use in Bad Faith

Respondent commercially benefits by redirecting Internet users to Respondent’s commercial website by use of a misleading domain name containing in its entirety Complainant’s internationally known mark.  Respondent’s use of a domain name that is 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. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <barbiestyle.net> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 7, 2004.

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