Mattel, Inc. v Jardimar Holdings Corp / Ernesto Charingola
Claim Number: FA1202001431562
Complainant is Mattel, Inc. (“Complainant”), represented by Jamie E. Platkin of Cantor Colburn LLP, Connecticut. Respondent is Jardimar Holdings Corp / Ernesto Charingola (“Respondent”), Geneva, Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbielife.com>, registered with URL Solutions Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 27, 2012.
On March 1, 2012, URL Solutions Inc. confirmed by e-mail to the National Arbitration Forum that the <barbielife.com> domain name is registered with URL Solutions Inc. and that Respondent is the current registrant of the name. URL Solutions Inc. has verified that Respondent is bound by the URL Solutions Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barbielife.com. Also on March 6, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following submissions:
a) Complainant has rights in the BARBIE mark which it uses in connection with the sale of dolls, toys, games, and related goods and services;
b) Complainant registered, through the United States Patent and Trademark Office (“USPTO”), the BARBIE mark (e.g., Reg. No. 689,055 registered December 1, 1959) multiple times;
c) Complainant has multiple registrations for the BARBIE mark (e.g., Reg. No. 501430 registered July 24, 2002 ) through the competent authority in Switzerland ;
d) Respondent registered the <barbielife.com> domain name on March 1, 2006;
e) The <barbielife.com> domain name is confusingly similar to Complainant BARBIE mark;
f) Respondent is not commonly known by the <barbielife.com> domain name;
g) The <barbielife.com> domain name resolves to a website which displays links to competing goods and services;
h) Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name;
i) Respondent had actual knowledge of Complainant’s rights in the BARBIE mark prior to its registration and use of the <barbielife.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the manufacture and sale of a wide range of childrens’ dolls and toys under the famous BARBIE name and other products and has been so engaged for many years:
2. Complainant registered, through the United States Patent and Trademark Office (“USPTO”), the BARBIE mark (e.g., Reg. No. 689,055 registered December 1, 1959) multiple times;
3. Complainant has multiple registrations for the BARBIE mark internationally and particularly in Switzerland (Reg. No. 501430 registered July 24, 2002) where Respondent is domiciled;
4. Respondent registered the <barbielife.com> domain name on March 1, 2006; it resolves to a website which displays links to competing and other goods and services;
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."
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Applying that principle, the Panel finds that Complainant has made out a prima facie case as required. The prima facie case is based on the following considerations:
(a) Respondent has chosen to use in its domain name Complainant’s famous BARBIE trademark and has embodied the whole of the mark into the domain name, adding only the generic word “life” , which can only enhance the confusing similarity that then exists between the disputed domain name and the BARBIE mark and the generic Top Level Domain “.com”;
(b) Respondent uses the <barbielife.com> domain name to resolve to a website featuring links to competing goods and services including products with names that include the BARBIE mark , other products that directly compete with Complainant’s products and other goods and services of a more generic nature that are promoted with the implication that they are endorsed or approved by Complainant ;
(c) This use by Respondent of Complainant’s famous BARBIE trademark and name has clearly been without the knowledge or approval of Complainant;
(d) Complainant also argues that Respondent is not commonly known by the <barbielife.com> domain name. Complainant contends that Respondent is not licensed or authorized to use the BARBIE mark and has no relationship with Complainant. Additionally, Complainant provides that the WHOIS record for the <barbielife.com> domain name lists “Jardimar Holdings Corp / Ernesto Charingola” as the domain name registrant. Panels have previously held that the WHOIS record for a disputed domain name and the allegations made by the complainant often illustrate whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).
(e) Complainant also contends that Respondent is not using the <barbielife.com> domain name in a way which is protected under Policy ¶¶ 4(c) (i) and 4(c) (iii). Complainant contends that Respondent displays links listed as “All Free Games” and “Princesses Games” that compete with the goods and services Complainant provides in connection with the BARBIE mark. The display of competing links has been found by prior panels to not confer rights or legitimate interests in a disputed domain name to a respondent. See Disney Enters., Inc. v. Kemble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii)). Therefore, the Panel finds that Respondent’s use of the <barbielife.com> domain name is neither a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use.
These matters go to establish the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant first relies on Policy ¶ 4(b)(iv) and argues that Respondent registered and is using the disputed domain name in an effort to create confusion as to the source of the <barbielife.com> domain name in order to take commercial advantage of Internet users’ mistakes regarding this confusion. Complainant asserts that Respondent’s <barbielife.com> domain name resolves to a website that displays links to goods and services that compete with Complainant under headings such as “Princesses Games” and “WildTangent Games.” Complainant contends that Respondent receives compensation for the display of these links and for each Internet user that is diverted through them. The Panel infers that Respondent is receiving monetary gain as a result of its display of the links of its website. The Panel finds under Policy ¶ 4(b)(iv) that Respondent registered and is using the <barbielife.com> domain name in order to create confusion as to Complainant’s possible affiliation with the disputed domain name and then taking commercial advantage of the mistakes that Internet users make as a result of this confusion. The Panel therefore finds that Respondent acted in bad faith in the registration and use of the disputed domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b) (iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Secondly, Complainant alleges that Respondent must have had actual notice of Complainant's rights in the BARBIE mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO and as evidenced by Respondent’s inclusion of the Complainant’s mark in its domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a) (iii) and continued to use it in full knowledge of Complainant’s trademark and the fame of its products. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbielife.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: April 10, 2012
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