Mattel, Inc. v. RanComp Ltd.
Claim Number: FA0510000579563
Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is RanComp Ltd. (“Respondent”), UK, GB.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barbiebell.com>, registered with Bulkregister, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2005.
On October 18, 2005, Bulkregister, LLC. confirmed by e-mail to the National Arbitration Forum that the <barbiebell.com> domain name is registered with Bulkregister, LLC. and that Respondent is the current registrant of the name. Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. 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 October 19, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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:
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)
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.
b. At the time of the filing of this complaint, the disputed domain name was registered to RanComp Ltd. 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 "bell" after it. See Mattel, Inc. v. Harems Internet Services, 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 domain name barbiebell.com. There is no evidence of any affiliation to any alleged porn star named "Barbie Bell." See Mattel, Inc. v. Harems Internet Services, 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 non-commercial or fair use of the
domain name barbiebell.com. The URL address www.barbiebell.com, a pornographic website, claims to be the home of the "Porn Star Barbie Bell Fan Club." This site charges monthly fees for membership.
f. 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
g. Respondent has used the domain barbiebell.com with the intent to trade on the goodwill Complainant has earned in its BARBIE products, and to enhance the commercial value of its own services. Respondent has damaged the reputation, business and goodwill of Complainant. See Mattel, Inc. v. Phayze, Inc., FA147303 (Nat. Arb. Forum April 15, 2003); Mattel, Inc. v. MKB Productions, FA244738 (Nat. Arb. Forum April 26, 2004); Mattel, Inc. v. Harems Internet Services, Inc., FA262995 (Nat. Arb. Forum June 14, 2004).
h. By using the domain name barbiebell.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.
i. By letters and e-mails dated November 17, 2004 and November 29, 2004, Complainant demanded that Respondent transfer ownership of the domain name barbiebell.com to Complainant. These letters were sent to the Registrant at the contact information contained in the WHOIS at that time.
j. Respondent did not respond to either of these attempts to contact it.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the BARBIE mark (i.e., Reg. No. 728,811 issued March 20, 1962; Reg. No. 741,208 issued November 27, 1962) in association with dolls, toys, clothes, accessories, CD-ROM games and songs.
Respondent registered the <barbiebell.com> domain name on March 28, 2002. The disputed domain name resolves to an adult-oriented website that charges membership fees. The website purports to be associated with a porn star named “Barbie Bell.”
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 has provided evidence of its registration of the BARBIE mark with the USPTO, which the Panel determines to be sufficient to establish Complainant’s rights in the mark for purposes of Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The <barbiebell.com> domain name fully incorporates Complainant’s famous BARBIE mark with the addition of the common or descriptive term “bell.” Simply adding a common term after Complainant’s registered and famous mark does not render the domain name distinct from the mark. 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 Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). In addition, Complainant sells bicycle bells containing the image and likeness of Barbie.
The Panel does not view the use of the generic top-level domain “.com” as important to its analysis under Policy ¶4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶4(c).
Complainant asserts that Respondent is not commonly known by the <barbiebell.com> name. Complainant further points out that although the website at the disputed domain name purports to be associated with a porn star allegedly named “Barbie Bell,” there is no evidence in the record of any affiliation between Respondent and this person. While Barbie Bell might well have some rights to her own name, she is not a party to this proceeding, YUM! Brands Inc. and KFC Corporation v. Ether Graphics a/k/a Andrew Gruner, FA0311000212651 (January 2, 2004). The Respondent may assert its rights, not the rights of some third party.
The Panel finds nothing in the record supports a finding Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The evidence shows the <barbiebell.com> domain name resolves to an adult-oriented website that charges membership fees. It is not a bona fide offering of goods or services under Policy ¶4(c)(i) to use Complainant’s BARBIE mark to attract Internet users to a commercial adult-oriented website. Such commercial use to benefit from Complainant’s fame and goodwill also cannot be construed as a legitimate noncommercial or fair use of the domain name under Policy ¶4(c)(iii). Thus, Respondent has not established rights or legitimate interests under Policy ¶4(c)(i) or (iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is using Complainant’s famous BARBIE mark in the <barbiebell.com> domain name to attract Internet users interested in Complainant’s products and services to Respondent’s adult-oriented website, where Respondent benefits from membership fees. This is evidence Respondent is attempting to capitalize on the goodwill associated with Complainant’s BARBIE mark by creating a likelihood of confusion to attract Internet users for Respondent’s commercial benefit. Respondent’s practice of diversion is evidence of bad faith registration and use under Policy ¶4(b)(iv). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Respondent has failed to provide full and correct information when it registered this domain name. For example, “UK, GB” hardly qualifies as a complete address. Providing false or misleading whois contact information creates a presumption of bad faith, Agent Host v. Host Dot Com Investments, AF-0343 (October 16, 2000) and The Procter & Gamble Company v. Hong Gil Dong, FA0510000572962 (November 10, 2005). This Panel elects to draw that conclusion.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbiebell.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, , Panelist
Dated: November 29, 2005