Mattel, Inc. v. Harems Internet Services,
Inc.
Claim Number: FA0404000262995
PARTIES
Complainant
is Mattel, Inc. (“Complainant”),
represented by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Harems Internet
Services, Inc. (“Respondent”), represented by Myles Hare, 331
Elmwood Drive, Suite 4-259, Moncton, NB Canada E1A 1X6.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <barbiebelle.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
PANEL
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.
Hon.
Judge Nelson A. Diaz (Retired) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 23, 2004; the Forum received a hard copy of the
Complaint on April 26, 2004.
On
April 26, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain name <barbiebelle.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.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
April 29, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 19,
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@barbiebelle.com by e-mail.
A
timely Response was received and determined to be complete on May 19, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on May 21, 2004.
A
timely Additional Submission was received from Respondent and was determined to
be complete on May 24, 2004.
On June 1, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Judge Nelson A. Diaz (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
(1) Complainant contends that Respondent’s
domain name <barbiebelle.com> is identical or confusingly similar
to trademarks in which Complainant has rights;
(2) Complainant contends that Respondent has no
rights or legitimate interest in the disputed domain; and
(3) Complainant contends that Respondent
registered and is using the domain name in bad faith.
B.
Respondent
(1) Respondent denies the claims. Respondent disputes that the domain name <barbiebelle.com>
is confusingly similar to Complainant’s trademarks, apparently based on the
fact that Respondent’s website occasionally references “Barbie Belle,” a famous
porn star.
(2) Respondent contends it does have a
legitimate interest in the disputed domain; and
(3) Respondent denies that it has acted in bad
faith in registering and using the domain name.
C.
Additional Submissions
In
subsequent submissions, both Complainant and Respondent clarified their respective
contentions. The Panel reviewed the
additional submissions and considered them in the decision below.
FINDINGS
The Panel finds that: (a) <barbiebelle.com>
is identical or confusingly similar to Complainant’s registered trademarks; (b)
Respondent has no legitimate interest in the domain name; and (c) Respondent
registered the domain name in bad faith and is using the domain name in bad
faith. For the reasons explained below,
the Panel orders that the domain name be transferred to Complainant.
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
asserts that it holds rights in various BARBIE marks through several
registrations with the U.S. Patent and Trademark Office (“USPTO”), including, inter
alia, Reg. Nos. 689,055 and 728,811 (registered on December 1, 1959 and
March 20, 1962, respectively). Federal
registration of a mark is prima facie evidence
of validity, and creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden of
rebutting this assumption. Despite
Respondent’s claim that “Barbie” is either a given name or is a nickname of the
given name Barbara, Respondent has not rebutted the presumption of inherent
distinctiveness. Furthermore, Respondent’s implication that Complainant’s
mark is generic because it is a common nickname or given first name also
carries little weight. The evidence of
record clearly demonstrates that BARBIE is not generic for its goods and
services, and that Respondent is using the distinctiveness of Complainant’s
mark to drive Internet users to its own pornographic sites.
Under
Paragraph 4(a) of the Policy, it is clear that the domain <barbiebelle.com> is confusingly similar to Complainant’s
registered BARBIE marks. The Panel
notes that the domain name fully incorporates the mark and merely adds the
descriptive term “belle.” See Sony Kabushiki Kaisha v. Kil, D2000-1409
(WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . .
. nor the suffix ‘.com’ detract from the overall impression of the dominant
part of the name in each case, namely the trademark SONY” and thus Policy ¶
4(a)(i) is satisfied). The fact that
Complainant also uses “belle” in conjunction with its registered marks, and has
done so for approximately 12 years, further buttresses the finding of confusing
similarity.
It
is axiomatic that the addition of the generic top-level domain “.com” is
irrelevant in determining whether the <barbiebelle.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 concludes that Complainant has met its burden of proof on the first prong
and that the domain name is confusingly similar to Complainant’s registered
BARBIE marks.
Under paragraph 4(c) of the Policy,
evidence of a registrant’s rights or legitimate interests in the domain name
includes:
(1) Demonstrable preparations to use the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(2) An indication that the registrant has
been commonly known by the domain name even if it has acquired no trademark
rights; or
(3)
Legitimate noncommercial or fair use of the domain name without intent to
divert consumers or to tarnish the trademark.
In
support of its claim, Complainant argues that Respondent has no rights or
legitimate interests in the domain name <barbiebelle.com>
because Respondent is not commonly
known by the name “Barbie Belle.” Notwithstanding
Respondent’s assertions that Barbie Belle is a “famous porn star” and that
Respondent uses <barbiebelle.com> to direct Internet surfers
searching for Ms. Belle to a website apparently related to Respondent, there is
no evidence of record that Respondent is in anyway affiliated with the alleged
Ms. Belle or any goods or services she may provide. Accordingly, pursuant to
Policy ¶ 4(c)(ii), Respondent has not shown that it has rights and legitimate
interests in the domain name. 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).
Complainant
further contends that Respondent lacks rights and legitimate interests in the <barbiebelle.com> domain name
because the domain name resolves to a pornographic website. Respondent
counters that it has rights and legitimate interests in the <barbiebelle.com> domain name because users may use the domain name
as the means of accessing a website that features the porn star Barbie
Belle. This argument is specious at
best. There is no evidence of record
that Barbie Belle is affiliated with, or has somehow licensed, Respondent to
use her likeness.
In any event, the Panel finds that, as
used by Respondent, the domain name does tarnish Complainant’s mark by
directing users to a pornographic website which is completely unrelated to <barbiebelle.com>. It is well-established that use of a domain
name for linking or pass throughs 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 ABB Asea Brown Boveri Ltd. v. Quicknet,
D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the
disputed domain name in connection with pornographic images and links tarnishes
and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or
legitimate interests in the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of
its domain name to link unsuspecting Internet traffic to an adult
orientated website, containing images of scantily clad women in provocative poses,
did not constitute a connection with a bona fide offering of goods or services
or a noncommercial or fair use); see also Black & Decker Corp. v.
Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding
that Respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral fee, did not evidence rights
or legitimate interests in the domain name);
see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119
(Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or
legitimate interests in a domain name that used Complainant’s mark and
redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements).
Based upon the evidence, the Panel finds
that Complainant has met its burden of proof with regard to Paragraph 4(c) of
the Policy.
Complainant
argues that Respondent’s use of the <barbiebelle.com>
domain name to link to a pornographic website demonstrates bad faith
pursuant to Policy ¶ 4(a)(iii). See
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (finding that Respondent’s tarnishing use
of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Microsoft
Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s
use of Complainant’s mark to post pornographic photographs and to publicize
hyperlinks to additional pornographic websites evidenced bad faith use and
registration of the domain name).
Respondent,
on the other hand, contends that its registration and use of the <barbiebelle.com> domain name
does not amount to bad faith because Respondent had rights and legitimate
interests in the domain name prior to the dispute. See Mule Lighting,
Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith
where Respondent has an active website that has been in use for two years and
where there was no intent to cause confusion with Complainant’s website and
business).
Ultimately,
Respondent’s contentions are not persuasive. The evidence clearly shows a pattern of registering domain names
similar to Complainant’s. Respondent is
not absolved of bad faith in this particular instance merely because Respondent
did transfer other, unrelated domain names to Complainant. In fact, the mere fact that Respondent
received fees in the other case strongly suggests Respondent is receiving
click-through fees in the instant case.
That alone is enough to support a finding of bad faith. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website
<iwin.com>, presumably receiving a portion of the advertising revenue
from the site by directing Internet traffic there, thus using a domain name to
attract Internet users for commercial gain); see also H-D Michigan,
Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing
domain name to intentionally attempt to attract Internet users to its
fraudulent website by using Complainant’s famous marks and likeness).
From
the evidence of record, the Panel finds that Respondent was using a domain name
confusingly similar to Complainant’s mark for commercial gain by receiving
click-through fees for redirecting Internet users to a pornographic website,
and thus concludes that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Finally,
Respondent asserts that Complainant has engaged in reverse domain name
hijacking but Respondent merely makes the assertion without expanding on how
Complainant has engaged is such activity.
The Panel considered the claim, and dismisses it. Complainant has satisfied all the prongs of
the test set forth under the Policy. As
such, the Panel finds that Complainant brought the Complaint in good faith and did
not engage in reverse domain name hijacking.
See World Wrestling Fed’n Entm’t, Inc. v.
Ringside Collectibles, D2000-1306 (WIPO
Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the
Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <barbiebelle.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Judge Nelson A. Diaz (Retired), Panelist
Dated: June 14, 2004
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