DECISION

Mattel, Inc. v. Lee Ji Ya

Claim Number:  FA0404000255885

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Lee Ji Ya (“Respondent”), 110dong 1404ho Hyundai 1 chaAPT, Hyuchun-2dong Youngju-city, Gyeongsangbuk-do 750758 Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbie89.com>, registered with Yesnic Co. Ltd.

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.

Honorable Paul A. Dorf (Ret.) 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, Yesnic Co. Ltd. confirmed by e-mail to the Forum that the domain name <barbie89.com> is registered with Yesnic Co. Ltd. and that Respondent is the current registrant of the name. Yesnic Co. Ltd. has verified that Respondent is bound by the Yesnic Co. Ltd. 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 19, 2004, in Korean language, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 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@barbie89.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 , May 24, 2004 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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.

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. Respondent’s <barbie89.com> domain name is confusingly similar to Complainant’s BARBIE mark.

2. Respondent does not have any rights or legitimate interests in the <barbie89.com> domain name.

3. Respondent registered and used the <barbie89.com> domain name in bad faith.

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

FINDINGS

Complainant registered the BARBIE trademark with the United States Patent and Trademark Office (“USPTO”) on December 1, 1959 (Reg. No. 689055).  Complainant subsequently registered numerous other BARBIE-related marks, including registration numbers 728,811 (issued Mar. 20, 1962), 741,208 (issued Nov. 27, 1962), 741,649 (issued Dec. 4, 1962), and 768,331 (issued Apr. 21, 1964), among many others. 

Complainant uses the BARBIE mark in connection with a variety of goods relating to its famous BARBIE dolls and other merchandise.

Respondent registered the disputed domain name <barbie89.com> on December 12, 2003.  Respondent uses the domain name to host a website that offers “Barbie” merchandise for sale.

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 a result of its multiple registrations of the mark with the USPTO within over a forty-year period.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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.”).

Domain names that contain a third-party’s mark and that merely append numerals have been found to be confusingly similar to the third-party mark under Policy ¶ 4(a)(i).  In this case, the disputed domain name contains Complainant’s BARBIE mark and has merely appended the numerals “89” to the mark.  Therefore, the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel is free to construe Respondent’s failure to respond to the Complaint as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name. See 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); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because it is using a domain name confusingly similar to Complainant’s BARBIE mark to sell Complainant’s goods offered under its mark without authorization.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent, a reseller of Complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to Complainant’s mark); see also Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”).

In addition, the record fails to indicate that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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 has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by attempting to profit from a domain name confusingly similar to Complainant’s mark through sales of Complainant’s products without authorization.  This use suggests that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website).

Furthermore, the Panel finds that Respondent either knew or should have known about Complainant’s rights in the BARBIE mark at the time it registered the disputed domain name.  Its subsequent registration of a domain name that incorporates Complainant’s mark and that is used to sell Complainant’s merchandise is also evidence of bad faith registration and use.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Moreover, Respondent is using the domain name to sell Complainant’s goods offered under the BARBIE mark without authorization, which in turn competes with Complainant’s business.  Such use is evidence that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Complainant has established Policy ¶ 4(a)(iii).

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 <barbie89.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf, Panelist

Dated:  June 2, 2004

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