DECISION

 

Mattel, Inc. v. KPF, Inc.

Claim Number: FA0403000244073

 

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is KPF, Inc. (“Respondent”), P.O. Box 271193, Oklahoma City, OK 73137.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bellemodebarbie.com>, registered with Network Solutions, 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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 4, 2004; the Forum received a hard copy of the Complaint on March 5, 2004.

 

On March 10, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <bellemodebarbie.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 30, 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@bellemodebarbie.com by e-mail.

 

A timely Response was received and determined to be incomplete on March 30, 2004.

 

A timely Additional Submission was received from Complainant and was determined to be complete on April 5, 2004.

 

A timely Additional Submission was received from Respondent but was determined to be deficient.

 

On April 15, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 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)        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.

 

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix):

 

Identical to and/or Confusingly Similar

 

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; 741,208 issued November 27, 1962 and renewed on November 27, 1982; 741,649 issued on December 4, 1962 and renewed on December 4, 1982; 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 December 24, 1994; 1,041,587 issued on June 22, 1976 and renewed on June 22, 1996; 1,300,766 issued on October 16, 1984; 1,693,139 issued on June 9, 1992; 1,746,477 issued on January 12, 1993; 1,754,535 issued on February 23, 1993; 1,769,285 issued on May 4, 1993; 1,773,571 issued on May 25, 1993; 1,775,637 issued on June 8, 1993; 1,795,876 issued on September 28, 1993; 1,710,196 issued on August 25, 1992; 1,760,729 issued on March 23, 1993; 1,947,330 issued on January 9, 1996; and 1,995,873 issued on August 20, 1996. These registrations are valid and subsisting.

 

b.         At the time of the filing of this Complaint, the disputed domain name was registered to KPF, Inc.  The disputed domain name is confusingly similar to and dilutive of Complainant’s registered trademark for BARBIE within the meaning of the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. § 1125(d).           

Rights or Legitimate Interests

 

c.          Respondent is not commonly known by the name Barbie and has acquired no trademark or service mark rights to the domain name <bellemodebarbie.com>. 

 

d.                  Respondent has not made a legitimate non-commercial or fair use of the domain name <barbie1004.com>.  The URL address <bellemodebarbie.com> advertises and sells clothing for fashion dolls.

 

Registration and Use in Bad Faith

 

e.                  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>.

 

f.          Respondent has used the domain <bellemodebarbie.com> 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.

g.         By using the domain name <bellemodebarbie.com>, 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 in violation of the Federal Anti-Dilution Act, 15 U.S.C. § 1125(c).  Respondent’s use of the domain name <bellemodebarbie.com> has infringed and will continue to infringe the BARBIE trademark in violation of 15 U.S.C. § 1114(a).

h.         By letter and e-mail dated June 12, 2002 and April 30, 2003, copies of which are annexed as Exhibit C, Complainant demanded that Respondent transfer ownership of the domain name to Complainant. 

B. Respondent

 

The subject domain name is no longer being used for my website. I have registered a new domain name, <bellemodedolls.com>. Moreover, original registration of <bellemodebarbie.com> expired in 2002, and I did not renew registration of it at that time. There was never any intention on my part to come into conflict with any of the legitimate rights of the Mattel Corporation; my intention was merely to facilitate the location of my website for interested parties. This being the case, my voluntary relinquishment of the domain name of <bellemodebarbie.com> should be construed only as an indication of my unwillingness to enter into any sort of dispute with Mattel, regardless of the merit, or lack of merit in their claim. Please note that the correct e-mail address is: ktfinc@earthlink.net. It was previously, ktfinc@email.msn.com. At no time have I used kpfinc@email.msn.com, and to my knowledge, there has never been an entity named KPF, Inc. Any and all communications directed to me at the e-mail address of kpfinc@email.msn.com were incorrectly addressed and were never received by me.

 

C. Additional Submissions

 

Complaint’s Additional Submission

 

Respondent, in her response, incorrectly argues that she is no longer the registrant of <bellemodebarbie.com>, that there was never an entity by the name KPF, Inc., and that the website is not operational.  However, a search of the WHOIS database at Networksolutions.com, the registrar of the domain name, reveals that <bellemodebarbie.com> is in fact registered to KPF, Inc. and that it is not due to expire until March 25, 2005.  Furthermore, a visit to <bellemodebarbie.com> reveals that the site is, in fact, still operational.

 

Respondent’s Additional Submission

 

Case No.FA0403000244073 Attention: M. Schaber This is my fifth attempt to contact you by e-mail. I have also tried to download your response forms on-line, but something is not working, because I do [sic] not receive the forms. RESPONSE: The subject domain name is no longer being used for my website. I have registered a new domain name, <bellemodedolls.com>. Moreover, original registration of <bellemodebarbie.com> expired in 2002, and I did not renew registration of it at that time. There was never any intention on my part to come into conflict with any of the legitimate rights of the Mattel Corporation; my intention was merely to facilitate the location of my website for interested parties. This being the case, my voluntary relinquishment of the domain name of <bellemodebarbie.com> should be construed only as an indication of my unwillingness to enter into any sort of dispute with Mattel, regardless of the merit, or lack of merit in their claim. Please note that the correct e-mail address is: ktfinc@earthlink.net. It was previously, ktfinc@email.msn.com. At no time have I used kpfinc@email.msn.com, and to my knowledge, there has never been an entity named KPF, Inc. Any and all communications directed to me at the e-mail address of kpfinc@email.msn.com were incorrectly addressed and were never received by me. /Kathy Fisher/ KTF, Inc. P.O. Box 271193 Oklahoma City, OK 73137 ktfinc@earthlink.net FAX No. NONE

 

Respondent then went on to indicate Network Solutions must have “obviously” misunderstood Respondent’s contact information when the domain name was originally registered in 2000.

 

FINDINGS

The Panel finds for a variety of reasons that:

(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.

 

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.

 

This case presents a number of interesting issues.

 

Respondent’s failure to include the certification statement required by ICANN Rule 5(b)(viii) makes the Response (and supplemental Response) deficient.  This fact, coupled with the incorrect whois information and Respondent’s concession on the merits, causes this Panel to decline to accept Respondent’s Response (and supplemental Response) in reaching the merits of this case. See Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight would be afforded to the facts alleged in Respondent’s deficient submission, partly because it “did not contain any certification that the information contained in the e-mail was, ‘to the best of Respondent’s knowledge complete and accurate’” in accordance with Rule 5(b)(viii)).

 

Any person who registers a domain name has a continuing duty to maintain up to date whois information for their domain name.  Somehow the whois information for this domain has NEVER been correct since 2000.  This is inexcusable and was not explained by Respondent.  Even so, Respondent (a “corporation” which does not exist) did receive actual notice of this proceeding.

 

Respondent concedes voluntarily relinquishing the domain name.  Somehow, this relinquishment has not been effectuated.  The Panel notes Respondent’s difficulties in sending e-mail and in controlling its website, suggesting Respondent is “technologically challenged.”  This Panel will give effect to Respondent’s intentions that Respondent failed to carry out.

 

In an abundance of caution, this Panel will review the various factors under the ICANN Policy, admittedly drawing each inference in favor of Complainant and against Respondent in light of the very peculiar circumstances of this case.

 

Identical and/or Confusingly Similar

Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (“USPTO”).  Complainant holds several registrations with the USPTO for the mark, including Reg. Nos. 728,811 and 741,208 (registered on March 20, 1962 and November 27, 1962, respectively).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also 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.  Respondent has the burden of refuting this assumption).

 

Respondent’s <bellemodebarbie.com> domain name is confusingly similar to Complainant’s BARBIE mark.  The Panel finds the domain name is confusingly similar to Complainant’s mark because the domain name fully incorporates the mark and adds the generic words “belle” and “mode.”  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark).

 

The addition of the generic top-level domain “.com” is irrelevant in determining whether the <bellemodebarbie.com> domain name is confusingly similar to Complainant’s 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Rights or Legitimate Interests

Respondent lacks rights and legitimate interests in the <bellemodebarbie.com> domain name because Respondent is not commonly known by the domain name.  Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

Respondent’s <bellemodebarbie.com> domain name resolves to a website that sells clothing for fashion dolls (including the famous “Barbie” doll).  Respondent is using a domain name confusingly similar to Complainant’s mark for commercial gain.  Commercial use of a domain name confusingly similar to another’s mark 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).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of Respondent’s registration of the domain name it can be inferred that Respondent is attempting to capitalize on the confusion created by the domain name’s similarity to the mark).

 

Respondent lacks rights and legitimate interests in the <bellemodebarbie.com> domain name because Respondent stated in its Response that it has relinquished its rights in the domain name.  See Taco Bell Corp. v. Tango Bella, D2000-1229 (WIPO Dec. 12, 2000) (transferring the domain name where Respondent agreed that it had no rights in the domain name); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).  Such a declaration need not be under oath.

 

Respondent’s assertion that it is no longer the registrant of the <bellemodebarbie.com> domain name is demonstrably false because the WHOIS information clearly shows Respondent is the registrant and states the registration does not expire until March 25, 2005. 

 

Registration and Use in Bad Faith

Respondent registered and used the <bellemodebarbie.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name is confusingly similar to Complainant’s mark and is used for commercial gain by taking advantage of the goodwill associated with the mark.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

Respondent had actual or constructive knowledge of Complainant’s mark because the mark is famous and is registered with the United States Patent and Trademark Office (and is even mentioned on the website as a trademark belonging to Complainant).  Registration of a domain name confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there 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) (“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 Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).

Respondent’s statement that it has relinquished rights in the <bellemodebarbie.com> domain name is evidence that Respondent registered and used the domain name in bad faith.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

 

Failure to provide correct whois information (whether contact information or the domain owner’s correct name) is also strong evidence of bad faith.  See Home Dir.  v. HomeDirector, D2000-0111 (WIPO Apr. 14, 2000); see also Agent Host Co v. Host Dot Com Invs., AF-00343 (eRes. Oct. 16, 2000).

 

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 <bellemodebarbie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

  

Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: April 26, 2004

 

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