Mattel, Inc. v. Transfinancial a/k/a Gail
Powell
Claim Number: FA0503000445539
PARTIES
Complainant
is Mattel, Inc. (“Complainant”),
represented by William Dunnegan, of Perkins and Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Transfinancial a/k/a Gail Powell (“Respondent”), represented by Robert Lyons,
6952 Day St., Tujunga, CA 91042.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <exotictsbarbie.com>,
registered with Enom, Inc.
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.
Barry
Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 24, 2005.
On
March 24, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <exotictsbarbie.com>
is registered with Enom, Inc. and that the 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 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 18,
2005 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@exotictsbarbie.com by e-mail.
An
untimely Response was received and determined to be complete on April 19, 2005.
On April 25, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Barry Schreiber as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
This
Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)
(ix)
a. Complainant
owns the trademark for BARBIE and has received U.S. Certificate of Trademark
Registration Nos. 728,811 issued March 20, 1962 and renewed on March 20, 1982
and May 10, 2002; 741,208 issued November 27, 1962 and renewed on November 27,
1982 and November 11, 2002; 768,331 issued on April 21, 1964 and renewed on
April 21, 1984; 768,397 issued on April 21, 1964 and renewed on April 21, 1984;
772,298 issued on June 30, 1964 and renewed on June 30, 1984; 810,106 issued on
June 21, 1966 and renewed on June 21, 1986; 814,091 issued on August 30, 1966
and renewed on August 30, 1986; 814,995 issued on September 13, 1966 and
renewed on September 13, 1986; 816,601 issued on October 11, 1966 and renewed
on October 11, 1986; 817,200 issued on October
25, 1966 and renewed on October 25, 1986; 1,000,125 issued on December 24, 1974 and renewed on
February 27, 1995; 1,041,587 issued on June 22, 1976 and renewed on July 25,
1996; 1,300,766 issued on October 16, 1984; 1,693,139 issued on June 9, 1992;
1,769,285 issued on May 4, 1993 and renewed on June 7, 2003; 1,773,571 issued
on May 25, 1993 and renewed on June 7, 2003; 1,775,637 issued on June 8, 1993;
and 1,795,876 issued on September 28, 1993 and renewed on November 28, 2003.
These registrations are valid and subsisting.
A copy of certain certificates of registration from the United States
Patent and Trademark Office for the BARBIE mark are attached as Exhibit A.
b. At
the time of the filing of this Complaint, the disputed domain name was
registered to Transfinancial a/k/a Gail Powell. The disputed domain name is confusingly similar to and dilutive
of Complainant’s registered trademark for BARBIE.
c. The
disputed domain name fully incorporates Complainant's BARBIE trademark and
merely adds "exoticts" before it.
See Mattel, Inc. v. Harems Internet Servs., Inc., FA 262995 (Nat. Arb.
Forum June 14, 2004) ("The Panel notes that the domain name fully
incorporates the mark and merely adds the descriptive term "belle.").
Rights
or Legitimate Interests
d. Respondent
is not commonly known by the name “Barbie” and has acquired no trademark or
service mark rights to the <exotictsbarbie.com> domain name. There is no evidence of any affiliation to
any alleged porn star named "ExoticTSBarbie." See
Mattel, Inc. v. Harems Internet Servs.,
Inc., FA 262995 (Nat. Arb. Forum June 14, 2004) ("[T]here is no
evidence of record that Respondent is in any way affiliated with the alleged
Ms. Belle or any goods or services she may provide. Accordingly, pursuant to Policy ¶4(c)(i), Respondent has not
shown that it has rights and legitimate interests in the domain name.")
e. Respondent has not made a legitimate
noncommercial or fair use of the
<exotictsbarbie.com>
domain name. The URL address <exotictsbarbie.com>
transfers
to a commercial website called “ErosWebDesign” located at the URL
<eroswebdesign.com/portfolio.html>.
This website advertises Respondent's services designing pornographic
websites and lists various links to the pornographic websites Respondent has
designed. A copy of this web page is
attached as Exhibit B.
f. Respondent's
use of the domain to link through to his pornographic website design company
does not constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use. See Mattel,
Inc. v. Harems Internet Servs., Inc., FA 262995 (Nat. Arb. Forum June 14, 2004)
("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).").
g. The
registration of this domain name blocks Complainant from
using this domain name for its own business. In connection with its
BARBIE
line of products, Complainant uses many domain names,
including,
but not limited to, <barbie.com>, <barbiecollectibles.com,> and
<barbiecollectiblesstore.com>.
h. Respondent has used the <exotictsbarbie.com>
domain name with the intent to trade on the goodwill Complainant has earned
in its BARBIE products, and to enhance the commercial value of their own
services. Respondent has damaged the
reputation, business and goodwill of Complainant.
i. By using the <exotictsbarbie.com> domain name, Respondent has diluted, and will continue to dilute, the distinctive
quality of the BARBIE Trademark by lessening its capacity to identify
Complainant’s products and services.
j. Respondent's website provides links to
various pornographic websites. Upon
information and belief, Respondent receives 'click-through' fees for the hits
generated to those pornographic websites.
See Mattel, Inc. v. Harems Internet Servs., Inc.,
FA 262995 (Nat. Arb. Forum June 14, 2004) ("[Receiving click-through fees]
alone is enough to support a finding of bad faith.")
k. By letter and e-mail dated March 22,
2005, copies of which are annexed as Exhibit C, Complainant demanded that
Respondent transfer ownership of the domain name to Complainant.
l. Respondent responded by e-mail dated
March 22, 2005, a copy of which is annexed as Exhibit D. Respondent refused to transfer the domain to
Complainant and instead made an offer to sell the domain to Complainant.
m. Respondent sent an additional e-mail
response to Complainant on March 23, 2005.
A copy of that e-mail is annexed as Exhibit E.
A copy of ICANN’s Uniform Domain Name Resolution
Policy is attached as Exhibit F.
B. Respondent
Identical to and/or Confusing Similar
a. <exotictsbarbie.com> is a
website created to display the photographic images
of a
model who uses the stage name of ExoticTSBarbie.com. The domain name was
created on May 8, 2003. It has operated
from that point forward as a "pay website." Customers sign up for subscriptions for $19.95 per month to view
electronic adult images of said model.
The model is a latina transsexual, who views herself as having
"exotic" looks. The domain
name was secured and used to communicate this image to her fans and potential
customers. This pay website business
has been handled through ccbill.com, a credit card processing company as a
sub-account, under our general company account with them, #908415-0016.
b. While the website is currently
undergoing a redesign, elements of what the previous design looked like are
still available via Google's "cached" web page archives as follows:
<http://64.233.179.104/search?q=cache:qY1YTYKw8jEJ:www.exotictsbarbie.com/bio.html++site:www.exotictsbarbie.com+exotictsbarbie&hl=en>
<http://64.233.179.104/search?q=cache:5ESJ9myhiOwJ:www.exotictsbarbie.com/menu.html++site:www.exotictsbarbie.com+exotictsbarbie&hl=en>
<http://64.233.187.104/search?q=cache:Cw-tZnXN528J:www.exotictsbarbie.com/webmasters.html++site:www.exotictsbarbie.com+exotictsbarbie&hl=en>
c. While
Complainant has submitted various documents relating to trademarks they own
related to the name "Barbie," none of the trademarks relate to the
business we conduct. We do not believe there is any danger that a reasonable
person would make an association between the content and elements contained in
the domain and <exotictsbarbie.com> and Complainant's trademarks.
We do not believe that the domain name is confusing similar to or dilutive of
the Complainant's trademarks.
Rights or legitimate Interests
a. Respondent is a website designer
specializing in adult pay websites. We
routinely acquire and hold in our name domain names which we create for our
model partners. Instead of designing
and maintaining these websites on straight "fee for hire" basis, we
often charge nothing upfront to create and design these websites and instead
share in the revenues generated by them, splitting the profits with each
model.
b.
As documented by the URL
links above, Respondent has made a bona fide offering of the services described
related to the domain name. A copy of
the financial report created and maintained by ccbill.com on the <exotictsbarbie.com>
domain name can be viewed at
<eroswebdesign.com/etsb.html>
c.
The fact that the <exotictsbarbie.com>
domain name currently (and temporarily) links back to Respondent's website
design service "portfolio" page simply reflects that during this
period of time when the <exotictsbarbie.com> website is being
redesigned, the URL allows fans and potential customers to see that the website
still exists and keeps the link "alive" until such time as the
redesigned site is back online.
Registration and Use in Bad Faith
a. Respondent
asserts that Complainant's apparent claim that it's trademark rights extend to
every and any use of the feminine name "Barbie" is over-reaching and
beyond the scope of the rights its specific trademarks have entitled it to.
b.
The images and other content
associated with the <exotictsbarbie.com> domain name (as
documented in the URL links above) clearly shows that there is no intended, nor
any reasonable dilution to Complainant’s trademark rights.
c.
We assert that
Complainant’s claim of actual or potential damage to its trademark rights is
without merit as no reasonable person is likely to believe that there is or
could be any commercial, or other, association between Respondent's business
and Complainant's.
FINDINGS
The
Panelist finds that Complainant has proved each of the required three
elements of Paragraph 4(a) of the Policy, subsections (i), (ii) and (iii), to
wit: (i) Respondent’s domain name, <exotictsbarbie.com>,
is identical or confusingly similar to Complainant’s trademark; (ii) Respondent has no
legitimate interests with respect to the domain name; and (iii) Respondent
registered the domain name in bad faith and hence the relief sought by
Complainant should be granted. (It
is here noted, that although an untimely Response by Respondent was received
and determined to be complete on April 19, 2005, such Response was not in
compliance with ICANN Rule #5; the Panelist has nevertheless reviewed this
Response and has included same in the record.
The Panelist felt that even though the Panelist’s findings and decision
would have been the same with or without the untimely response, to protect the
parties respective positions and to uphold the integrity of the decision in
this case, the better route was to include Respondent’s untimely Response so as
to afford complete due process for the
parties to be heard and a full airing of the issues involved.)
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 has established rights in the BARBIE mark through registration
of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
Nos. 728,811 issued March 20, 1982, renewed March 20, 1982 and May 10, 2002;
741,208 issued November 27, 1962, renewed on November 27, 1982 and November 11,
2002). See 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. The respondent has the burden of refuting
this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Complainant contends that
Respondent’s <exotictsbarbie.com> domain name is confusingly
similar to Complainant’s BARBIE mark because the domain name incorporates
Complainant’s mark in its entirety and merely adds the terms “exotic” and “ts,”
which is an abbreviation of the term “transsexual.” The Panel has found that such minor additions are insufficient to
negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See 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 the complainant’s mark); see also 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 the
complainant combined with a generic word or term).
Furthermore,
the Panel finds that Respondent’s addition of the generic top-level domain
“.com” is not enough to overcome a finding of confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well
established principle that generic top-level domains are irrelevant when conducting
a Policy ¶ 4(a)(i) analysis”).
Complainant
asserts that Respondent is using the confusingly similar <exotictsbarbie.com>
domain name to operate a commercial website that features adult-oriented
content and numerous links to other adult-oriented websites. The Panel has found that such use is not a
use in connection with 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 U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services); see also Sony Kabushiki Kaisha v. Domain
rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16,
2002) (finding that the respondent’s use of its domain name in order to divert
Internet users to a website that offers search engine services and links to
adult orientated websites was not considered to be in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy).
Additionally,
Complainant contends that Respondent is neither commonly known by the <exotictsbarbie.com>
domain name nor authorized to register domain names featuring Complainant’s
BARBIE mark. The Panel agrees and has
therefore concluded that Respondent lacks rights and legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the 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”).
Moreover,
the Panel finds that Respondent’s use of the <exotictsbarbie.com>
domain name, which is confusingly similar to Complainant’s BARBIE mark, to
display adult-oriented material is evidence that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). 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 [the complainant’s mark]” was evidence
that the respondent had no rights or legitimate interests in the disputed
domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA
155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the
disputed domain names to divert Internet users to a website that features
pornographic material, had been “consistently held” to be neither a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair
use).
The
Panel clearly finds that because Respondent’s <exotictsbarbie.com>
domain name is confusingly similar to Complainant’s BARBIE mark, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, the Panel has concluded that Respondent’s commercial use of the
disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Qwest Communications
Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
In
addition, the Panel finds that Respondent registered the confusingly similar <exotictsbarbie.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the BARBIE mark due to Complainant’s registration of the mark with the USPTO
and the immense fame Complainant’s mark has acquired. Therefore, the Panel has concluded that registration of a domain
name that is confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights is tantamount to bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Exxon Mobil
Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the
respondent had actual and constructive knowledge of the complainant’s EXXON
mark given the worldwide prominence of the mark).
More
specifically, the Panel has determined
that Respondent is tarnishing Complainant’s BARBIE mark by using the
confusingly similar <exotictsbarbie.com> domain name in connection
with an adult-oriented website, and therefore has concluded that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use
of the 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); see also Six Continents Hotels, Inc. v.
Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“Whatever the motivation of the
respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith.”).
DECISION
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that the relief sought by Complainant shall be GRANTED..
Accordingly, it is Ordered that the <exotictsbarbie.com>
domain name be TRANSFERRED from Respondent to Complainant.
Barry Schreiber Panelist
Dated: May 9, 2005
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