Mattel, Inc. v. Gutteberg.com a/k/a
Erlend Gutteberg
Claim
Number: FA0403000245919
Complainant is Mattel, Inc. (“Complainant”), represented
by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Gutteberg.com a/k/a Erlend Gutteberg (“Respondent”), Gronbergs veg 14b, Hommelvik, ST
N-7550, Norway.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <barbiezone.com>, registered with Register.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.
John
J. Upchurch as Panelist.
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, Register.com, Inc. confirmed by e-mail to the Forum that the
domain name <barbiezone.com> is registered with Register.com, Inc.
and that Respondent is the current registrant of the name. Register.com, Inc.
has verified that Respondent is bound by the Register.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 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@barbiezone.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 15, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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 <barbiezone.com>
domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or
legitimate interests in the <barbiezone.com> domain name.
3. Respondent registered and used the <barbiezone.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Mattel, Inc., is one of the largest manufacturers of consumer products,
including toys, CD-Rom games, accessories and dolls. The Barbie doll is one of
Mattel’s most famous products.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the BARBIE mark (e.g. Reg. No. 728,811, issued March 20,
1962; Reg. No. 817,200, issued October 25, 1966; Reg. No. 1,746,477, issued
January 12, 1993; and Reg. No. 1,995,873, issued August 20, 1996). Complainant
has used the BARBIE mark consistently since 1959.
Respondent
registered the disputed domain name on July 12, 2000. Respondent is using its
website to redirect Internet users to its own commercial website that offers
information about and options to purchase toy cars, including products
manufactured by Complainant.
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 that it has rights in the BARBIE mark through registration with the
United States Patent and Trademark Office and through the use of its mark in
commerce for the last forty-five years. 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 Policy ¶ 4(a)(i) has been satisfied.
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <barbiezone.com>
domain name. Thus, Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail.").
The Panel finds
that Policy ¶4(a)(ii) has been satisfied.
Respondent
registered the domain name for its own commercial gain. Respondent’s domain
name redirects Internet users who search under Complainant’s famous BARBIE mark
to its own commercial website that offers toy products, including toys
manufactured by Complainant, through the use of a domain name confusingly
similar to Complainant’s mark. Respondent’s practice of diversion, motivated by
commercial gain, through the use of a confusingly similar domain name evidences
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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
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 eBay, Inc v.
Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001)
(finding bad faith where Respondent is taking advantage of the recognition that
eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to Respondent’s site); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged
in bad faith use and registration by linking the domain name to a website that
offers services similar to Complainant’s services, intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidence bad faith use and registration of a domain name, additional factors
can also evidence bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Sufficient
evidence exists in the record to suggest that Respondent registered and used
the domain name in bad faith because Respondent had knowledge of Complainant’s
rights in the mark. Respondent’s registration of a domain name that
incorporates Complainant’s famous registered mark in its entirety, and deviates
only with the addition of a generic word, suggests that Respondent had
knowledge of Complainant’s rights in the famous BARBIE mark. Thus, the Panel
finds that Respondent likely chose the <barbiezone.com> domain
name based on the distinctive and famous qualities of Complainant’s mark. See 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).
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 <barbiezone.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: April 29, 2004
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