Mattel, Inc. v. Angela Knox
Claim Number: FA0403000245916
PARTIES
Complainant
is Mattel, Inc. (“Complainant”),
represented by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Angela Knox
(“Respondent”), 29 Woodbine Terrace, Gateshead, Tyne and Wear, NE10 9JU, Great
Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ukbarbie.com>,
registered with Joker.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.
Estella
S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 12, 2004; the Forum received a hard copy of the
Complaint on March 15, 2004.
On
March 15, 2004, Joker.com confirmed by e-mail to the Forum that the domain name
<ukbarbie.com> is registered
with Joker.com and that the Respondent is the current registrant of the
name. Joker.com has verified that
Respondent is bound by the Joker.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
March 17, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 6,
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@ukbarbie.com by e-mail.
A
timely Response was received and determined to be complete on March 31, 2004.
An
Additional Submission from Complainant was received on April 5, 2004, in a
timely manner in accordance with Supplemental Rule #7.
On April 12, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Estella S. Gold
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant contends that it owns the
registered trademark for BARBIE issued March 20, 1962, and continuously renewed
thereafter to the present date.
2. Complainant contends that the domain name
in dispute <ukbarbie.com> is
confusingly similar to and incorporates Complainant’s registered trademark for
BARBIE.
3. Complainant contends that Respondent is
not commonly known by the name “BARBIE” and has acquired no trademark or
service mark rights to the domain name in dispute.
4. Complainant contends that because
www.ukbarbie.com has links to sites which sell doll merchandise, the
Respondent’s site is a commercial site.
5. Complainant contends that Respondent’s
use of the domain name in dispute prevents Complainant from using this domain
name for its own legitimate business.
B.
Respondent
1. Respondent contends that her website is
not confusingly similar to Complainant’s trademark because the website contains
a disclaimer disassociating Respondent from Complainant.
2. Respondent contends that her use of the
domain name since 1997 was appropriately selected and is well known within the
UK doll-collecting community.
3. Respondent contends that her site is not
commercial in that she does not sell any products on her site and has never
done so.
4. Respondent contends that the service she
offers visitors to her site include links to authorized Mattel dealers with
information regarding new doll releases, and which Barbie dolls are available
to buy in which stores in the United Kingdom.
FINDINGS
1.
The
registration of the mark BARBIE is undisputed.
2.
Respondent’s
disputed domain name <ukbarbie.com>
incorporates within it the entirety of the registered trademark, plus a
geographic identification for “United Kingdom”.
3.
There is no
business relationship between Complainant and Respondent, and there are no
allegations that Respondent has Complanant’s authority in the operation of her
website.
4.
There is no
evidence submitted that Respondent has a pattern of domain name registrations
in bad faith, nor any effort to sell the domain name in dispute or for
commercial gain.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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
provides evidence of registration and use in commerce of its mark. The Panel construes this evidence as proof
that Complainant has rights in the BARBIE mark. 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).
The
Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark. The only difference
is the addition of the letters “uk.”
The Panel finds that the addition of these letters does not
significantly distinguish the domain name from the mark. Even though the letters “uk” are a common
abbreviation for United Kingdom, a domain name that concatenates a geographic
term with another’s mark does not significantly distinguish the domain name
from the mark. See Sunkist Growers, Inc. v. S G &
Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain
names <sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com> are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see
also VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between
Complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where Respondent added the word “India”
to Complainant’s mark).
Respondent claims
that it is not using the disputed domain name for commercial gain. The Panel finds that Respondent’s use
constitutes fair use, pursuant to Policy 4(c)(iii). See Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17,
2001) (finding that Respondent has rights and legitimate interests in the
domain name where Respondent made a non-commercial use of BAJABOATS.COM and
received no funds from users of the site connected to the domain name); see
also New York Press v. New York Press,
FA 94428 (Nat. Arb. Forum May 18, 2000) (finding that Respondent's use of the
its website for review and criticism of the New York press (media) and the fact
that he applied to the U.S. Patent and Trademark Office for the NEW YORK PRESS
mark, for use with his online publication is evidence that he began to use the
domain name for a legitimate non-commercial use); see also Springsteen v.
Burgur, D2000-1532 (WIPO Jan. 25, 2001) (finding no likelihood of confusion
between common law mark Bruce Springsteen and <brucespringsteen.com>
because even the relatively unsophisticated Internet user would realize that
not every domain bearing the name Bruce Springsteen is an official site).
Since the Complainant has failed to show
that the Respondent has no rights or legitimate interest in respect of the
domain name, this issue is not discussed further, as all three elements are
required under ICANN policy.
Furthermore, Complainant asserts claims
under the ACPA and the anti-dilution portion of the Lanham Act, as well as
alleging that it has proceeded with the UDRP to protect its trademark
rights. The Panel finds that this
Complaint is outside of the scope of the UDRP.
See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000)
(stating that the Policy’s administrative procedure is “intended only for the
relatively narrow class of cases of ‘abusive registrations.’” Cases where registered
domain names are subject to legitimate disputes are relegated to the courts); see
also AutoNation Holding Corp. v.
Alawneh, D2002-0581 (WIPO May 2, 2002)
(holding that assertions of trademark infringement "are entirely misplaced
and totally inappropriate for resolution through an ICANN proceeding. The scope
of an ICANN proceeding is extremely narrow: it only targets abusive
cybersquatting, nothing else").
For this reason, the arguments under the ACPA and the anti-dilution
portion of the Lanham Act are not addressed in this Decision.
DECISION
Complainant,
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
___________________________________________________
Estella S. Gold, Panelist
Dated: April 21, 2004
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page