DECISION

Mattel, Inc. v. Daniel Ierulli

Claim Number:  FA0312000220025

PARTIES

Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Daniel Ierulli, Calle22 2p-18, Urb. Mirador De Bairoa, Caguas, Puerto Rico (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com>, registered with Namesecure.Com.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 15, 2003; the Forum received a hard copy of the Complaint on December 16, 2003.

On December 19, 2003, Namesecure.Com confirmed by e-mail to the Forum that the domain names <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> are registered with Namesecure.Com and that Respondent is the current registrant of the names. Namesecure.Com has verified that Respondent is bound by the Namesecure.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 December 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 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@barbiefanclub.com, postmaster@barbiefetish.com, postmaster@barbiefanatic.com, postmaster@barbieorgy.com, postmaster@goodbarbie.com, postmaster@coedbarbie.com, postmaster@lesbianbarbie.com, postmaster@skiboatbarbie.com, postmaster@forkliftbarbie.com, postmaster@iwantabarbie.com, postmaster@iwantbarbie.com, postmaster@politicallycorrectbarbie.com, postmaster@wewantbarbie.com, and postmaster@whitesupremistbarbie.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 January 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain names are confusingly similar to Complainant’s BARBIE mark.

2. Respondent does not have any rights or legitimate interests in the <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain names.

3. Respondent registered and used the <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain names in bad faith.

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

FINDINGS

Complainant registered its BARBIE mark with the United States Patent and Trademark Office (“USPTO”) on December 1, 1959 (Reg. No. 689055) and has received numerous U.S. Certificates of Trademark Registrations (e.g. Reg. Nos. 728811, 741208, 741649, 768331).  Complainant has used its BARBIE mark in connection with its famous dolls, clothes, toys, among other things, since May 9, 1958.

Respondent registered each disputed domain name on February 25, 2003.  Respondent uses the names to host a domain name registry service website.

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 through registration with the USPTO and extensive use in commerce since 1958.  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).

The disputed domain names incorporate Complainant’s BARBIE mark in its entirety, and the names merely add generic or descriptive terms used in connection with Complainant’s famous mark.  See Arthur Guinness Son & Co. 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 AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

Therefore, Policy ¶ 4(a)(i) is established.

Rights or Legitimate Interests

The fact that Respondent has not asserted any rights or legitimate interests in the domain names is evidence that Respondent lacks rights and legitimate interests in the names.  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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Additionally, there is no evidence that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii) and the WHOIS registration information fails to imply that Respondent is commonly known by the names.  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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because it is diverting unsuspecting Internet users, who are attempting to find Complainant, to a site wholly unrelated to Complainant’s mark.  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Therefore, Policy ¶ 4(a)(ii) is established.

Registration and Use in Bad Faith

The notoriety of Complainant’s BARBIE mark is sufficient to allow the inference that Respondent reasonably should have been aware of Complainant’s rights in the mark.  Therefore, Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  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”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, Respondent has advanced no evidence to show that it has registered any of the disputed domain names in good faith.  See Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).

Moreover, it is likely that Respondent is profiting from its domain registry service, which is evidence of 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. Kahn, 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)).

Therefore, Policy ¶ 4(a)(iii) is established.

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 <barbiefanclub.com>, <barbiefetish.com>, <barbiefanatic.com>, <barbieorgy.com>, <goodbarbie.com>, <coedbarbie.com>, <lesbianbarbie.com>, <skiboatbarbie.com>, <forkliftbarbie.com>, <iwantabarbie.com>, <iwantbarbie.com>, <politicallycorrectbarbie.com>, <wewantbarbie.com>, and <whitesupremistbarbie.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated: January 29, 2004

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