Mattel, Inc. v. Erich Fuchs
Claim Number: FA0705000989693
Complainant is Mattel, Inc. (“Complainant”), represented by Megan
L. Martin, of Perkins & Dunnegan, 45 Rockefeller
Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sexbarbies.com>, registered with Enom, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2007.
On
On May 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@sexbarbies.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <sexbarbies.com> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <sexbarbies.com> domain name.
3. Respondent registered and used the <sexbarbies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., sells
BARBIE dolls, toys, clothes, accessories, CD-ROM games, and songs. Complainant holds numerous trademarks with
the United States Patent and Trademark Office (“USPTO”) for the BARBIE mark
(i.e., Reg. No. 728,811 issued
Respondent, Erich Fuchs, registered the <sexbarbies.com> domain name on
Respondent recently offered to sell the disputed domain name to Complainant, but Complainant declined.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 asserts rights in the BARBIE mark through its
numerous registrations with the USPTO. In Mattel, Inc. v. KPF, Inc.,
FA 244073 (Nat. Arb. Forum
Respondent’s <sexbarbies.com>
domain name contains Complainant’s BARBIE mark in its entirety with a few
additions. First, Respondent added the
word “sex” at the beginning. This
addition does not avoid a finding of confusing similarity under the
Policy. See Google, Inc. v. Bassano, FA 232958
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <sexbarbies.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). In this case, the Panel finds that Complainant has successfully established a prima facie case in support of its allegations. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <sexbarbies.com>
domain name. The WHOIS information
identifies Respondent as “Erich Fuchs.”
Furthermore, Respondent concedes on its website which resolves from the
disputed domain name that BARBIE is Complainant’s registered trademark, and
that “this website is in no way affiliated with [Complainant].” The Panel can find no other evidence in the
record indicating that Respondent is commonly known by the disputed domain
name. Therefore, the Panel concludes
that Respondent is not commonly known by the <sexbarbies.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Respondent previously used
the <sexbarbies.com> domain name to display a list of
hyperlinks advertising adult-oriented material.
Based on precedent, the Panel finds that this use of the disputed domain
name does not constitute a bona fide
offering of goods and services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
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 ¶¶ 4(c)(i) or
4(c)(iii)); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that
the respondent did not use a domain name in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use because
the respondent used the domain name to divert Internet users seeking the
complainant's goods or services to pornographic material and links, while
presumably earning a commission or referral fees from advertisers).
Currently, the <sexbarbies.com> domain name resolves to a website which states that the content of a “new adult project” is “coming soon.” In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), the panel found that “Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)” where the respondent provided no evidence that it actually planned to host a genealogy site. Similarly, in Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001), the panel found that the respondent’s unsupported claim that a consumer chat website would be forthcoming did not rise to the level of rights or legitimate interests under Policy ¶ 4(a)(ii). Like the disputed domain names in Google and Broadcom, Respondent’s <sexbarbies.com> domain name that states that content is “coming soon” is insufficient to show that Respondent holds rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The record indicates that Respondent attempted to sell the <sexbarbies.com> domain name to
Complainant, but Complainant declined.
Previous panels have found that an offer to sell a disputed domain name
to a complainant is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(i).
See Little Six, Inc. v. Domain For
Respondent previously used
the <sexbarbies.com> domain name to display a list of
hyperlinks advertising adult-oriented material, and is currently attempting to
develop a “new adult project” on its website which resolves from the disputed
domain name. Respondent’s use of the
disputed domain name to link to or display adult-oriented material likely dilutes
and tarnishes Complainant’s BARBIE mark.
For this reason, Respondent’s registration and use of the <sexbarbies.com> domain name
constitutes 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 the
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 Youtv, Inc.
v. Alemdar, FA 94243 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <sexbarbies.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
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