Mattel, Inc. v. Gopi Mattel
Claim Number: FA0411000372847
PARTIES
Complainant
is Mattel, Inc. (“Complainant”),
represented by David W. Quinto, of Quinn Emanuel Urquhart Oliver & Hedges, LLP, 865 South Figueroa Street, 10th
Floor, Los Angeles, CA 90017.
Respondent is Gopi Mattel (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mattel.org>,
registered with Tucows, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge, and have no known conflicts in serving as
Panelists in this proceeding.
The
Honorable Carolyn M. Johnson (Ret.), David Sorkin, and Hugues G. Richard, as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
29, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 1, 2004.
On
December 2, 2004, Tucows, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <mattel.org>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
December 8, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 28, 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@mattel.org by e-mail.
Pursuant
to Supplemental Rule 6, Respondent requested an extension of 17 days to respond
to the Complaint based upon extenuating circumstances. Complainant consented to the extension
request and the Forum granted the extension with a deadline of January 14, 2005
for which Respondent could file a Response.
A timely Response was received and determined to be complete on January
13, 2005.
An untimely Additional Submission was received on
January 27, 2005. While it is clear that the Panel, by virtue of its general
powers under the ICANN Rules, has discretion to consider the Additional
Submission despite this procedural shortcoming, after deliberation, the Panel
decided not to consider it in the case at hand. Not only was the Additional
Submission submitted nine days after the time delay provided under NAF
Supplemental Rule 7, but there was a complete lack of reasons given by
Complainant for this delay. Moreover, the representations made by Complainant
in the Additional Submission either reasonably could have been included in the
original Complaint, or fall outside the scope of the ICANN proceeding. The
latter situation is the case, for example, where Complainant offers to forward
all e-mail sent to Respondent's current e-mail address to another e-mail of
Respondent's choosing.
Finally, the Panel expressed concern that allowing the
Additional Submission would cause an undue delay of the entire proceeding for
no apparent reason. Clearly, it would not have been fair for the Panel to allow
the untimely Additional Submission without allowing Respondent to reply
accordingly. Moreover, the time delay which would have been granted to
Respondent for preparing the reply would only start running after a decision
allowing the Additional Submission had been made, thus causing further delay.
After deliberation, the Panel found such extensions would cause unduly delay to
the entire proceeding and constitute abuse of the ICANN rules. For these
reasons, the Panel refused to consider
the Additional Submission, as well as any reply Respondent may have prepared
thereto.
On February 1, 2005, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed the Honorable Carolyn M. Johnson (Ret.), David Sorkin and Hugues G.
Richard as Panelists. Hugues G.
Richard was designated as the chair of the Panel.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
argues that Respondent has registered a domain name that is identical to
Complainant’s MATTEL mark. To this effect, Complainant adds that the addition
of the generic top-level domain “.org” is not sufficient to avoid a finding of
confusing similarity, and has submitted authorities thereto as Annex 6 of its
Complaint.
Complainant
also argues that Respondent has no rights or legitimate interests in the
disputed domain name because Respondent is not known by the domain name.
Complainant adds that Mattel “is not a proper surname” and that Respondent
likely changed his last name from “Muthyal” to “Mattel” for the purpose of
asserting rights in the disputed domain name. Complainant also alleges that
Respondent has not made any use of the domain name.
Complainant
claims that the domain name was registered and is being used in bad faith
because, in light of its famous mark, it is highly unlikely that Respondent was
unaware of Complainant when he registered the domain name. It adds that bad
faith may be found where Respondent “knew or should have known” of the
registration of a trademark prior to registering the domain name. Complainant
also alleges that Respondent has not made any use of or demonstrable
preparations to use <mattel.org> in connection with a bona fide
offering of goods and services, because the website located at the disputed
domain has remained under construction at all times since its registration, and
that such a prolonged non-use of a domain name has been found to constitute bad
faith registration and use of a domain name.
Complainant adds that by holding the disputed domain name, Respondent is
preventing Complainant from a bona fide use of the domain name as a location
for its non-for-profit activities, as the .org domain names are allegedly
“reserved for non-for-profit organizations”. Further, Complainant contends that
Respondent is not making constructive use of the domain name because it
believes Respondent’s latest website at the domain name contains
“click-through” advertising and, as such, constitutes use to intentionally
attract, for commercial gain, Internet users to a website or other on-line
location by creating a likelihood of confusion with Complainant’s mark as to
the source, affiliation, or endorsement of another website.
B.
Respondent
Respondent
argues that the fact that Complainant did not complain for almost four years
after the registration of the disputed domain name by Respondent is evidence
that Complainant did not believe its claims were truly warranted.
Respondent
does not dispute the fact that Complainant’s trademark and the disputed domain
name are identical.
However,
Respondent claims to have rights and legitimate interests in the disputed
domain name since “Mattel” is his surname and has been since he has become
naturalized as a U.S. citizen in 1996 - five years prior to his registration of
the disputed domain name. Moreover, Respondent argues he is commonly known by
the domain name, as his Certificate of Naturalization, his driver’s license and
other supporting documents allegedly indicate.
Respondent
also argues that Complainant has not met its burden to prove bad faith
registration and use of the disputed domain name by Respondent. He claims that
there is no evidence to show that Respondent has registered the disputed domain
for the purpose of selling, renting or transferring it to Complainant, to
prevent Complainant from reflecting its trademark in a domain name, or to
disrupt Complainant’s business or attract customers seeking to purchase its
products.
Respondent
is also of the opinion that the Panel should make a finding of Reverse Domain
Name Hijacking in the present case. Respondent argues that Complainant should
have known, from the private investigation it undertook on Respondent, that
Respondent’s surname was Mattel long before he registered the disputed domain
name. Moreover, since Respondent has been the registrant of the disputed domain
name for almost 4 years, it claims that Complainant has had plenty of time to
conduct its research on Respondent. As such, Respondent argues that Complainant
knew, or at least should have known, that it could not prove the disputed
domain name was registered in bad faith, and that the Panel should issue a
ruling that Complainant has engaged in Reverse Domain Name Hijacking.
The
Panel having declined to accept the untimely Additional Submission filed by
Complainant, it is unnecessary to elaborate on its contents.
FINDINGS
The Panel finds that Complainant has established
rights in the trademark “MATTEL” and that the disputed domain name is identical
to this trademark. However, the relief sought by Complainant is denied because
the Panel found that Respondent has rights and legitimate interests in the
domain name. The Panel also found that the record did not warrant a finding of
Reverse Domain Name Hijacking in the present case.
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.”
Pursuant
to Paragraph 4(a) of the Policy, a 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;
(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’s
rights in the MATTEL trademark
As it
appears from Annex 2 of the Complaint, Complainant owns the registrations for
the MATTEL trademark with the United States Patent and Trademark Office since
at least 1963 (e.g., Reg. Nos. 2,835,826, 898,209, 2,279,928, 2,203,905,
635,129). As such, the Panel finds that Complainant has established rights in
the MATTEL mark through these registrations.
These registrations constitute prima facie evidence of the
validity of Complainant's alleged mark, Complainant's ownership of its alleged
mark, Complainant's exclusive right to use the alleged mark on the goods or
services for which it was registered, as well as Complainant's priority of
right to use of the mark dating back to at least as early as the filing date of
the application for federal registration. See Tahoe Luxury
Properties, Inc. v. Shari Chase and Chase Int., D2004-0151 (WIPO May 21,
2004), see also Drake Bliss v. Cyberline Ent., D2001-0718 (WIPO Sept.
20, 2001). The Panel is therefore satisfied that Complainant owns trademark
rights on the mark “MATTEL.”
Identical
and/or Confusingly Similar
It is clear, and
is undisputed by Respondent, that the <mattel.org> domain
name is identical to Complainant’s mark because it incorporates the MATTEL mark
in its entirety. Furthermore, the Panel
agrees with Complainant’s argument that the addition of the generic top-level
domain “.org” is insufficient to distinguish the disputed domain name from
Complainant’s mark. It is therefore
very possible that the domain name causes Internet user confusion, precisely
because the domain name incorporates – and essentially consists of - the MATTEL
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 Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to Complainant’s mark); see also BMW AG v. Loophole, D2000-1156 (WIPO
Oct. 26, 2000) (finding that there is “no doubt” that the domain name
<bmw.org> is identical to Complainant’s well-known and registered BMW
trademarks).
Paragraph 4(c) of the Policy lists three non-exclusive
circumstances that can demonstrate a registrant’s rights or legitimate
interests in the disputed domain name. Of more relevance to the present case
Paragraph 4(c)(ii) of the Policy provides that a Respondent may demonstrate it
has rights or legitimate interests in a domain name if it proves that:
“(ii) you (as an individual, business or other
organization) have been commonly known by the domain name, even if you have
acquired no trademark or service mark rights”
As it clearly appears form the Response and supporting
documents thereof, Respondent legally changed his last name from Muthyal to
Mattel five years prior to registering the <mattel.org> domain
name. Respondent adopted Mattel as his
last name upon becoming a naturalized United States citizen because it was
similar to his previous last name, easily pronounced and is similar to other
names of his origin, such as Patel and Mittal. In light of this, and of the use
Respondent and his family have made of his new legal surname “Mattel”, it is
clear he is today commonly known by that last name. As such, the Panel finds
that Respondent has rights and legitimate interests to use his legally and
properly acquired surname on the internet. See Valazquez Jimenez v. Velazquez-Perez, D2001-0342 (WIPO May
8 2001) (“individual has a legitimate interest in a domain name that
corresponds to that person’s name”); see also GA Modafine S.A. v.
Mani.com, D2001-338 (WIPO May 30, 2001) ( “Respondent’s surname is Mani and
he is commonly known as such. He is entitled to use it on the internet”).
In its Complaint, Complainant claims that “Mattel is not a proper surname
and was likely adopted by Respondent for the purpose of asserting rights in the
domain name.” Based on the evidence before it, the Panel cannot agree with
this. The phonetic similarity between Respondent’s old surname and “Mattel,” as
well as the fact that he changed this name immediately upon becoming a
naturalized U.S. citizen – five years before his registration of the disputed
domain name – makes such an assertion very unlikely. Moreover, it is not for
Complainant to deem what is a “proper” surname simply because it owns a
trademark on the same name in conjunction with the sale of certain wares.
Rather, and pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent has
rights in the disputed domain name because it reflects Respondent’s last name,
and as such Respondent has been commonly known by the name “Mattel”, even if
Respondent has acquired no trademark or service mark rights on the name. See G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001)
(finding that Respondent had rights and legitimate interests in the
<armani.com> domain name, where the domain name reflects the initials of
Respondent’s first and middle name, combined with its entire last name); see
also Penguin Books Ltd. v. Katz,
D2000-0204 (WIPO May 20, 2000) (finding that Respondent had rights or
legitimate interests in the <penguin.com> domain name where the evidence
established that it reflected Respondent’s nickname and the domain name was
used to send electronic email for Respondent’s family).
Paragraph 4(c)(iii) of the Policy states that a Respondent may also
demonstrate it has rights or legitimate interests in a domain name if it proves
that it is “making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.”
In
its Complaint, Complainant argues that Respondent has not made any use
of the domain name. However, Respondent claims – and, in light of all the
evidence before it, the Panel has seen no reason to believe the contrary – that
he, at the very least, has used the domain name <mattel.org> to construct
e-mail addresses for himself and his family. That alone – notwithstanding the
fact that the domain name today hosts Respondent’s personal website, which the
Panel has verified on a proprio motu basis – is enough to rebut the
charge that Respondent has not made any use of the disputed domain
name.
Complainant also
argues that Respondent likely adopted the surname Mattel for the purpose of
asserting rights in the domain name. But, as Respondent points out in his
Response, the surname was adopted five years before the registration of the
disputed domain name. Furthermore, the evidence before the Panel indicates that
Respondent acquired the disputed domain name in order to provide himself and
his family with personal e-mail addresses that would be permanent and personal
to him and that would not be changed in the future. Respondent has been using
the gopi@mattel.org e-mail address regularly as his primary e-mail contact
address and user I.D. for several accounts many years before the initiation of
these proceedings. The Panel is therefore unable to conclude, based on the
evidence before it, that Respondent changed his surname to “Mattel” for
commercial reasons. As has been indicated, at the time of the drafting of this
decision, the website located at the disputed domain name was being used as a
personal page by Respondent.
For these
reasons, the Panel also finds that Respondent has rights in the disputed domain
name pursuant to Policy ¶ 4(c)(iii)
because Respondent intended to use the domain name to post information about
his family without the intent to use it for commercial gain, to mislead
consumers, or to tarnish Complainant’s mark.
See Lockheed Martin Corp.
v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has
rights in the <missionsuccess.net> domain name where she was using the
domain name in connection with a noncommercial purpose); see also 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).
Reverse
Domain Name Hijacking
The Panel finds no evidence that Complainant brought the Complaint in
bad faith. As it has been
established above, it is clear that Complainant owns exclusive trademark rights
on the mark “MATTEL” based on its registrations thereof. Moreover, Respondent’s
registration of the <mattel.org> domain consists squarely of that
mark. While the Panel has found that Respondent nonetheless has rights and
legitimate interests in the domain name, it is not of the opinion the Complaint
was brought in bad faith. In particular, it did not appear from the record that
Complainant or its investigator knew when or why Respondent adopted the surname
“Mattel”. At the very most, the Complaint may have been misconceived, since
Complainant assumed rather rapidly that Respondent’s choice of surname had to
be based on financial considerations and a prior intent to claim rights in the disputed
domain name. 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”); see also Credit Suisse
Group v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002)
(finding no Reverse Domain Name Hijacking where “the Panel consider[ed] the
Complaint to have been misconceived rather than brought in bad faith”).
DECISION
Complainant
having failed to meet its burden to prove all three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
The Honorable Carolyn M. Johnson (Ret.),
David Sorkin, and Hugues G. Richard
Panelists
Dated: February 15, 2005
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