Mattel, Inc. v. Domain Admin a/k/a
******It's all in the name ******
Claim
Number: FA0403000248936
Complainant is Mattel, Inc. (“Complainant”), represented
by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Domain Admin a/k/a ******It's all in the name****** (“Respondent”), 2555 Boca Rio
Drive, Boca Raton, FL 33433.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwmatchbox.com>, registered with Enom,
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 22, 2004; the Forum received a hard copy of the
Complaint on March 23, 2004.
On
March 25, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <wwwmatchbox.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 15, 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@wwwmatchbox.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 26, 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 <wwwmatchbox.com>
domain name is confusingly similar to Complainant’s MATCHBOX mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwmatchbox.com> domain name.
3. Respondent registered and used the <wwwmatchbox.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
asserts that it registered the MATCHBOX mark with the U.S. Patent and Trademark
Office (“USPTO”) on September 24, 1974 (Reg. No. 933,794).
Respondent
registered the <wwwmatchbox.com> domain name on March 22,
2000. The domain name resolves to a
website that advertises that the domain name registration is for sale and
provides links to other car related websites such as “Car Insurance,” “Finance
& Mortgage,” and “Buy Candles.”
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.
To satisfy the
requirements of Policy ¶ 4(a)(i) Complainant must prove (1) rights in a
trademark or service mark and (2) that the disputed domain name is identical or
confusingly similar to the mark.
The Complaint
addresses the first element of Policy ¶ 4(a)(i) as follows:
a.
Complainant
owns the trademark for MATCHBOX and has received U.S. Certificate of Trademark Registration No. 993,794 issued on
September 24, 1974 and renewed on September 24, 1994. This registration is
valid and subsisting. A copy of the
certificate of registration is attached as Exhibit A.
The language quoted above is all inclusive of
Complainant’s argument that it has rights in the MATCHBOX mark. Thus,
Complainant asserts that it has established rights in the MATCHBOX mark through
registration with the USPTO. However,
the registration documents provided in the Complaint list the holder of the
mark as Matchbox Toys Limited.
Complainant has not provided documentation showing a link to Matchbox
Toys Limited.
As shown above,
the Complaint does not assert nor does it provide evidence that Complainant has
common law rights in the mark.
Therefore, the Panel finds that Complainant has failed to meet its
burden of proof pursuant to Policy ¶ 4(a)(i).
See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat.
Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the
Policy, Complainant must first establish a prima facie case.
Complainant’s initial burden is to provide proof of “valid, subsisting rights
in a mark that is similar or identical to the domain name in question”); see
also NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying
Complaint because Complainant was not the owner of the trademarks); see also
CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA
155888 (Nat. Arb. Forum June 3, 2003) (holding that as Complainant provided no
evidence to the Panel that it has any arrangement to represent the actual
trademark holder, or that any rights in the relevant trademark had been
assigned or licensed to Complainant, Complainant did not have standing to bring
a claim under the UDRP).
Because
Complainant must prove all three elements under Paragraph 4(a) of the Policy to
prevail in this proceeding, Complainant's failure to prove the elements listed
in Policy Paragraph 4(a)(i) means that the Panel need not consider whether
Complainant has proven the remaining elements contained in Policy Paragraphs
4(a)(ii) and (iii). See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED WITHOUT PREJUDICE.
James A. Carmody, Esq., Panelist
Dated:
May 7, 2004
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