Mattel, Inc. v. Alexander Boris Boch
d/b/a Niche Profit Ltd.
Claim
Number: FA0403000244078
Complainant is Mattel, Inc. (“Complainant”), represented
by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Alexander Boris
Boch d/b/a Niche Profit Ltd. (“Respondent”), Bl.
16 Entrée A Ap. 2, Smolian, BG, Bulgaria 4700.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <barbi2000.com>, registered with Stargate.com,
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 5, 2004; the Forum received a hard copy of the
Complaint on March 8, 2004.
On
March 5, 2004, Stargate.com, Inc. confirmed by e-mail to the Forum that the
domain name <barbi2000.com> is registered with Stargate.com, Inc.
and that Respondent is the current registrant of the name. Stargate.com, Inc.
has verified that Respondent is bound by the Stargate.com, Inc. 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
March 10, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 30, 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@barbi2000.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
April 6, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barbi2000.com>
domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or
legitimate interests in the <barbi2000.com> domain name.
3. Respondent registered and used the <barbi2000.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
one of the world’s largest manufacturers of consumer products, including toys,
games and dolls. Complainant and its
licensees have sold billions of dollars of merchandise through use of the
BARBIE mark. Complainant holds several
registrations for the BARBIE mark with the U.S. Patent and Trademark Office
(“USPTO”), including Reg. Nos. 728,811 and 741,208 (registered on March 20,
1962 and November 27, 1962, respectively).
Complainant uses the <barbie.com>, <barbiecollectibles.com>
and <barbiecollectiblesstore.com> domain names in conjunction with its
business.
Respondent
registered the <barbi2000.com> domain name on April 18, 2002. The domain name redirects Internet users to
an Internet directory website that provides links to adult oriented
websites.
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.
Complainant has
established 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, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <barbi2000.com>
domain name is confusingly similar to Complainant’s BARBIE mark because the
domain name fully incorporates the mark and merely omits the letter “e” from
the mark and adds the number “2000.”
The omission of the letter “e” and the addition of the number “2000” is
insufficient to distinguish the domain name from the mark. See Compaq Info. Techs.
Group, L.P. v. Seocho , FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also State Farm Mut. Auto.
Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000)
(finding that the domain name <statfarm.com> is confusingly similar to
Complainant’s STATE FARM mark); see also 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 Nintendo of Am., Inc. v. Lizmi, FA 94329
(Nat. Arb. Forum Apr. 24, 2000) (finding that Respondent’s domain names
<pokemon2000.com> and <pokemons.com> are confusingly similar to
Complainant’s mark).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the <barbi2000.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 finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to submit a Response, 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 has failed to contest the allegations of the Complaint; therefore,
the Panel presumes that Respondent lacks rights and legitimate interests in the
<barbi2000.com> 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 <barbi2000.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. 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).
In addition,
Respondent takes advantage of the goodwill associated with Complainant’s mark
because the <barbi2000.com> domain name is confusingly similar to
the mark and resolves to an Internet directory website that provides links to
adult-oriented websites. The Panel
presumes that Respondent receives click-through fees from Internet vendors when
the domain name redirects Internet users to the vendors’ adult-oriented
websites. Thus, Respondent’s use of the
domain name 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 Sony
Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat.
Arb. Forum Dec. 16, 2002) (finding that Respondent’s use of its domain name in
order to divert Internet users to a website that offers search engine services
and links to adult orientated websites was not considered to be in connection
with a bona fide offering of goods or services or a legitimate noncommercial or
fair use pursuant to Policy); see also Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum April 25, 2003) (finding that Respondent had no rights
or legitimate interests in a domain name that it used to redirect Internet
users to an Internet directory website that featured numerous pop-up
advertisements for commercial goods and sexually explicit websites).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel presumes
that Respondent receives click-through fees from Internet vendors when Internet
users access the vendors’ adult-oriented websites via the
<barbi2000.com> domain name.
Respondent’s commercial use of the confusingly similar domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nat’l Ass’n of Stock Car Auto Racing,
Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002)
(stating that “it is now well known that pornographers rely on misleading domain
names to attract users by confusion, in order to generate revenue from
click-through advertising, mouse-trapping, and other pernicious online
marketing techniques”); see also Youtv,
Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith
where Respondent attracted users to his website for commercial gain and linked
his website to pornographic websites).
The Panel infers
that Respondent had actual or constructive knowledge of Complainant’s mark
because the mark is famous worldwide. Registration
of a domain name confusingly similar to a mark, despite knowledge of the mark
holder’s rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See 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 Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith); see also
Ty Inc. v. Parvin, D2000-0688 (WIPO
Nov. 9, 2000) (finding that Respondent’s registration and use of an identical
and/or confusingly similar domain name was in bad faith where Complainant’s
BEANIE BABIES mark was famous and Respondent should have been aware of it); see
also Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of
registration, had notice of Complainant’s famous POKÉMON and PIKACHU
trademarks given their extreme popularity); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb.
Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international
popularity of the [ODIE] mark, Respondent knew or should have known that
registering the domain name in question would infringe upon the Complainant's
goodwill.").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <barbi2000.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 9, 2004
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