Mattel, Inc. v. Ailin Yoon
Claim Number: FA0704000967843
PARTIES
Complainant is Mattel, Inc. (“Complainant”), represented by William
Dunnegan, of Perkins & Dunnegan, 45
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msbarbie.com>, registered with Yesnic Co.
Ltd.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 23, 2007.
The Complaint was submitted in both Korean and English.
On April 26, 2007, Yesnic Co. Ltd. confirmed by e-mail to the
National Arbitration Forum that the <msbarbie.com> domain name is
registered with Yesnic Co. Ltd. and that
Respondent is the current registrant of the name. Yesnic Co.
Ltd. has verified that Respondent is bound by the Yesnic Co. Ltd. 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 2, 2007, a Korean language
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of May 22, 2007 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@msbarbie.com by e-mail.
A Response was received in English and in electronic format on May 3,
2007. Because the National Arbitration
Forum did not receive the Response in hard copy format, however, the Response
is deficient according to Supplemental Rule 5(a).
On May 30, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it 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. According to Complainant these registrations
are valid and subsisting.
Complainant contends that the domain name at dispute is confusingly similar to and dilutive of Complainant’s registered trademark for BARBIE.
Further Complainant contends that Respondent is not commonly known by the name Barbie and has acquired no trademark or service mark rights to the domain name at dispute. Furthermore, Respondent has not made a legitimate non-commercial or fair use of the domain name <msbarbie.com>. Respondent is operating a commercial website selling women's clothing and accessories. As a result, Respondent has no rights or legitimate interests in the domain name at dispute.
Complainant finally contends that the registration of the domain name at dispute 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>. Complainant demanded several times that Respondent transfer ownership of the domain name <msbarbie.com> to Complainant, but Respondent did not respond to either letter. As a result Respondent has registered and is using the domain name at dispute in bad faith.
B.
Respondent
On May 3, 2007, Respondent sent the following two e-mails to the
National Arbitration Forum:
Dear Sir,
Thank you for informing me about the complaint.
I never knew using msbarbie as a domain would develop such a huge problem.
I did not mean to use it in bad faith or to cause any harm to Mattel, Inc.
I really apologize for what I have done to Mattel, Inc..
Furthermore, the mails you sent me in January must have arrived as spam messages because
the mails you sent me recently were also found in my spam message box.
I did not mean to ignore your mails in January, so please do not misunderstand.
I will cancel the domain name and will be abolishing the site since I have stopped
running the e-business.
Once again, I am terribly sorry for bothering Mattel, Inc. and other related companies.
Please let me know whether the matter settles down after this mail.
I will be looking forward to your answer.
Sincerely Yours,
Ailin Yoon
Dear Sir,
I
would like to transfer ownership of the domain name msbarbie.com to Mattel,
Inc.
I am definitely not willing to go against the
complaint.
Thank you for your concern, and I hope I have
made it clear this time.
I will be looking forward to hearing from
you.
Yours Sincerely,
Ailin Yoon
FINDINGS AND 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.”
A Response was received in electronic format
on May 3, 2007. Because the National
Arbitration Forum did not receive the Response in hard copy format, however,
the Response is deficient according to Supplemental Rule 5(a). Therefore, the Panel may choose to deny the
deficient Response. See Telstra
Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to
be given to the lateness of the response is solely in the discretion of the
panelist); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept Respondent’s
deficient Response that was only submitted in electronic form because it would
not have affected the outcome had the Panel considered it). In the need to resolve the real dispute
between the parties, the Panel is of the view that ruling a Response
inadmissible because of formal deficiencies would be an extreme remedy not
consistent with the basic principles of due process. See Strum v. Nordic Net Exch. AB, FA 102843
(Nat. Arb. Forum Feb. 21, 2002)
(“[R]uling a Response inadmissible because of formal deficiencies would be an
extreme remedy not consistent with the basic principles of due
process. . ."); see also J.W. Spear & Sons PLC v.
Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that
where Respondent submitted a timely Response electronically, but failed to
submit a hard copy of the Response on time, “[t]he Panel is of the view that
given the technical nature of the breach and the need to resolve the real
dispute between the parties that this submission should be allowed and given
due weight”).
Preliminary Issue #2: Respondent Agrees to Transfer
Respondent has provided a Response apologizing for registering the
disputed domain name and agreeing to cancel the domain name registration and
“abolish” the website it has created at the disputed domain name. Furthermore, Respondent stated its willingness
and assent to transfer ownership of the domain name at dispute to Complainant. The Panel finds that in a circumstance
such as this, where Respondent has admitted that it does not have a past,
present or future interest in the disputed domain name and has consented to the
transfer of the domain name, the Panel may decide to forego the traditional
UDRP analysis and order the immediate transfer of the domain name. See
DECISION
Having established and determined that the requests of the parties in
this case are identical, in that Respondent does not contest Complainants’
remedy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msbarbie.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda,
Panelist
Dated: June 4, 2007
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