Claim Number: FA0706001024381
PARTIES
Complainant is Mattel, Inc. (“Complainant”), represented by Megan
L. Martin, of Dunnegan LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lennybarbie.com>, registered with Go Daddy
Software, 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.
David A. Einhorn appointed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on June 28, 2007; the National
Arbitration Forum received a hard copy of the Complaint on June 29, 2007.
On June 29, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <lennybarbie.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 July 2, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 23, 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@lennybarbie.com by e-mail.
A timely Response was received and determined to be complete on July 23, 2007.
On July 30, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David A. Einhorn as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant makes the following assertions:
1. Complainant, Mattel, Inc., owns federal trademark registrations for BARBIE. Complainant further contends that Respondent’s <lennybarbie.com> domain name is confusingly similar to Complainant’s Mark.
2. Complainant contends that Respondent does not have any rights or legitimate interests in the <lennybarbie.com> domain name.
3. Complainant contends that Respondent registered and used the <lennybarbie.com> domain name in bad faith.
B. Respondent
Respondent contends that
Complainant’s
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.”
Respondent asserts, in additional correspondence
to the National Arbitration Forum, that Complainant may not rely on its
However, the Policy is not confined to
traditional geographic boundaries and a complainant may rely on trademark
rights in a country other than respondent’s residence. See
Renaissance Hotel Holdings, Inc. v.
Renaissance
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 alleges rights in the BARBIE mark
through its registration of the mark with the USPTO. The Panel finds that Complainant’s timely
registration and extensive use of the BARBIE mark over many years establishes
its rights in the mark pursuant to Policy ¶ 4(a). See Torey
Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (“The
Panel finds that Complainant has established rights in the Trademark, by reason
of its U.S. trademark registrations, which are valid and subsisting. The U.S. Trademark Act is clear that the
Certificate of Registration, as here, is prima
facie evidence of the validity of the registered mark and the registrant’s
exclusive right to use the mark in commerce on or in connection with the goods
specified in the registration.”)
The disputed domain name fully incorporates
the BARBIE mark and adds the term “lenny” before it. Whether the resulting domain is confusingly
similar to the BARBIE mark is a close call because the added word “lenny” does
not have any apparent descriptive meaning in this context. Nevertheless, Respondent does not argue that
this domain is not confusingly similar to the BARBIE mark and merely (and unconvincingly)
argues that the BARBIE mark is generic.
However, Policy ¶ 4(a)(i) does not delve into the underlying generic or
non-generic nature of a disputed domain name.
See Skyhawk Techs., LLC v.
As Respondent has not provided any substantive
arguments pertaining to the rights or legitimate interests prong of this
analysis, Respondent has essentially defaulted on this issue. In view of this “default,” the Panel accepts
all reasonable allegations and inferences set forth in the Complaint regarding
the confusing similarity issue as true.
The Panel therefore finds that Policy ¶
4(a)(i) has been satisfied.
Complainant asserts that Respondent is not
commonly known by the <lennybarbie.com>
domain name. The WHOIS registration
information lists the registrant as “Aaron Jacques,” and Complainant asserts
that Respondent has not acquired any trademark or service mark rights to the
domain name in question. In light of the
lack of countervailing evidence, the Panel concludes that Respondent is not
commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts, and Respondent does not
dispute, that Respondent’s <lennybarbie.com>
domain name resolves to an adult-oriented website called “
The Panel therefore finds that ¶ 4(a)(ii) has been
satisfied.
Respondent is using a domain name similar to
Complainant’s BARBIE mark to direct Internet users to its adult-oriented web
site and is therefore profiting from the goodwill associated with the BARBIE
mark. Such use demonstrates registration
and use 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 complainant’s mark
to post pornographic photographs and to publicize hyperlinks to additional
pornographic web sites evidenced bad faith use and registration of the domain
name).
The Panel therefore finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lennybarbie.com> domain name be TRANSFERRED
from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 29, 2007
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