Mattel, Inc. v. Ebony Barbie a/k/a Erica
Diggs
Claim
Number: FA0405000271054
Complainant is Mattel, Inc. (“Complainant”), represented
by William Dunnegan, of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Ebony Barbie a/k/a Erica Diggs (“Respondent”), 11800 Braesview Apt. 1701, San
Antonio, Texas 78213.
The
domain name at issue is <ebonybarbie.com>, registered with Register.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 11, 2004; the Forum received a hard copy of the Complaint
on May 12, 2004.
On
May 12, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <ebonybarbie.com> is registered with Register.com and that
Respondent is the current registrant of the name. Register.com has verified
that Respondent is bound by the Register.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
May 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 3, 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@ebonybarbie.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
June 16, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <ebonybarbie.com>
domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or
legitimate interests in the <ebonybarbie.com> domain name.
3. Respondent registered and used the <ebonybarbie.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered the BARBIE trademark with the United States Patent and Trademark
Office (“USPTO”) on December 1, 1959 (Reg. No. 689,055). Complainant subsequently registered other
BARBIE marks, including registration numbers 728,811 (issued Mar. 20, 1962),
741,208 (issued Nov. 27, 1962), 741,649 (issued Dec. 4, 1962), and 768,331
(issued Apr. 21, 1964). Complainant
uses the BARBIE mark on and in connection with dolls.
Respondent
registered the disputed domain name <ebonybarbie.com> on January
3, 2003. Respondent is using the domain
name to host modeling photos and solicitations for employment as a model.
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
rights in the BARBIE mark as evidenced by its registration of the mark 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
domain name, <ebonybarbie.com>, is confusingly similar to
Complainant’s mark because the only difference is the adddition of the term
“ebony,” which does not significanly distinguish the domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
subject domain name incorporates the VIAGRA mark in its entirety, and deviates
only by the addition of the word “bomb,” the domain name is rendered
confusingly similar to Complainant’s mark).
The Panel finds
that Complainaint has satisfied Policy ¶ 4(a)(i).
The Respondent
has not submitted a Response in this matter.
Therefore the Panel may accept all reasonable allegations 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 Bayerische
Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a Response the Panel is free to make inferences
from the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do).
Respondent is
appropriating Complainant’s mark to advertise her modeling photos. Using another’s famous mark for pecuniary
benefit is not a bona fide offering of goods or services, pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant
to Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH
Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests based on the fact that the domain names bear no
relationship to the business of Respondent and that Respondent would only
legitimately choose to use Complainant’s mark in a domain name if Respondent
was seeking to create an impression that the two businesses were affiliated); see
also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29,
2002) (finding that Respondent’s use of Complainant’s WELLS FARGO mark to
redirect Internet users to a domain name featuring magazine subscriptions was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Although
Respondent appropriates Complainant’s mark for her professional moniker, the
Panel finds that her use of Complainant’s mark is parasitic in nature and does
not establish rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Neiman Marcus
Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003)
(noting that “Complainant has
established itself as the sole holder of all rights and legitimate interests in
the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by
the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact
information); see also Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003)
(finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”).
The Panel finds
that Complainaint has satisfied Policy ¶ 4(a)(ii).
The Panel
accepts Complainant’s allegations that Respondent is using the domain name in
bad faith because Respondent seeks to trade on Complainant’s goodwill. Attempting to commercially benefit by
creating a likelihood of confusion with another’s mark evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc.
v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith
where Respondent attracted users to advertisements); see also State
Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001) (given that Respondent is an
attorney and was well aware of Complainant and its rights before establishing
its own website, an inference can be made that Respondent sought to trade on
confusion with the California State Bar and exploit its reputation and
stature).
In addition,
Complainant has alleged that Respondent has diluted the distinctiveness of the
BARBIE mark. The Panel rejects any
claims made under the Lanham Act, for this forum does not resolve trademark
disputes. See 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"); see
also 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).
Nevertheless,
the Panel construes Complainant’s allegations of dilution as an allegation that
Respondent had notice of Complainant’s rights in the BARBIE mark. Intentionally using another’s mark for one’s
own benefit is predatory in intent and, therefore, evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
The Panel finds
that Complainaint has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ebonybarbie.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf, Panelist
Dated:
June 30, 2004
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