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Generic Top Level Domain Name (gTLD) Decisions |
Mattel, Inc. v. RaveClub Berlin
Claim Number: FA0305000158040
Complainant is Mattel, Inc., El Segundo, CA (“Complainant”)
represented by William Dunnegan
of Perkins & Dunnegan. Respondent
is RaveClub Berlin, Cherry Hill, NJ
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <divastaz.com>
registered with Computer Services
Langenbach Gmbh d/b/a Joker.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 16, 2003; the Forum
received a hard copy of the Complaint
on May 22, 2003.
On
May 19, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by
e-mail to the Forum that the domain name <divastaz.com>
is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that
Respondent is the current registrant of the name. Computer
Services Langenbach
Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer
Services Langenbach Gmbh d/b/a Joker.com
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 23, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 12, 2003 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@divastaz.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 19, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Judge
Harold Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <divastaz.com> domain name is confusingly similar to
Complainant’s DIVA STARZ mark.
2. Respondent does not have any rights or
legitimate interests in the <divastaz.com>
domain name.
3. Respondent registered and used the <divastaz.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
filed a trademark/service mark application with the United States Patent and
Trademark Office (“USPTO”) for the DIVA STARZ
mark (Ser. No. 76/144,216) on
October 10, 2000 in relation to dolls, and other goods and services.
Complainant asserts that it has
used the mark in commerce since September 30,
2000. In connection with its DIVA STARZ line of products, Complainant owns many
domain
name registrations, including <divastarz.com>, <divastars.com>
and <divastar.com>.
Respondent, an
infamous typosquatter, registered the <divastaz.com>
domain name on August 21, 2001. Respondent is using the disputed domain name to
divert Internet traffic to pornographic websites.
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.
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.
The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant
has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights
will suffice” to support a domain name
Complaint under the Policy. McCarthy on
Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). Complainant
provides evidence of a trademark/service mark application with the USPTO filed
on October
10, 2000. The Panel finds that both Complainant’s trademark/service
mark application and Complainant’s first-use in commerce of the
mark precede
Respondent’s registration of the <divastaz.com>
domain name and, thus, Complainant has established that it has primary rights
in the DIVA STARZ mark under Policy ¶ 4(a)(i). See American Anti-Vivisection Soc'y. v. "Infa dot Net" Web
Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that
the Complainant held the domain name prior to the Respondent’s
registration, as
well held a pending trademark application in the mark, evidences rights in the
domain name and the mark therein
contained); see also Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi,
D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or
confusingly similar to the Complainant’s pending
service mark application).
Respondent’s <divastaz.com> domain name is
confusingly similar to Complainant’s DIVA STARZ mark because the disputed domain
name appropriates Complainant’s entire
mark and merely omits the letter “r”
from the mark. The omission of one letter does not sufficiently differentiate
the disputed domain
name from the mark because the mark comprises the dominant
element of the domain name. See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a Respondent
does not
create a distinct mark but nevertheless renders the domain name
confusingly similar to Complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum
May 8, 2000) (finding that the domain names, <davemathewsband.com> and
<davemattewsband.com>,
are common misspellings and therefore confusingly
similar).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
neglected to reply to Complainant’s allegations. Thus, the Panel may accept any
reasonable inferences and allegations
in the Complaint as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless
clearly contradicted
by the evidence); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a Response the Panel is free to make inferences
from
the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do).
Moreover, due to
Respondent’s failure to come forward with a Response to the Complaint, the
Panel may presume that Respondent lacks
any rights to or legitimate interests
in the disputed domain name with regard to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see
also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate,
pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
Respondent is
using the <divastaz.com>
domain name to redirect Internet traffic to pornographic websites. This use of
the disputed domain name is neither a bona fide offering
of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial
gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated
to mislead consumers and to tarnish the
Complainant’s mark); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that infringing on another's well-known mark to provide a link to a
pornographic
site is not a legitimate or fair use).
Furthermore,
Respondent has presented no proof and there is no evidence in the record that
suggests Respondent is commonly known by
either DIVA STAZ or <divastaz.com>. Therefore, the
Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known
by the domain name prior to registration of the domain
name to prevail"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known
by the mark).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The Policy lists
four examples of circumstances that demonstrate bad faith registration and use
of a domain name. However, these examples
were never meant to be exclusive. At
its discretion, the Panel may look to the totality of the circumstances in
determining whether
a domain name has been registered and used in bad faith in
accordance with Policy ¶ 4(a)(iii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”); see also
Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May
18, 2000) (finding that in determining if a domain name has been registered in
bad faith, the Panel
must look at the “totality of circumstances”).
Respondent’s use
of a domain name confusingly similar to Complainant’s mark to divert Internet
traffic to a pornographic website itself
constitutes bad faith registration and
use under the Policy. See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the
Respondent linked the domain name in question to websites displaying
banner
advertisements and pornographic material); see
also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000)
(finding bad faith where Respondent attracted users to his website for
commercial gain
and linked his website to pornographic websites).
Furthermore,
Respondent is an infamous typosquatter. Typosquatting involves the registration
of domain names that deviate from a mark
only by a simple misspelling to
redirect Internet users who misspell the domain name they intended to reach
when surfing the Internet.
Like the affiliation with pornography, typosquatting
itself constitutes bad faith registration and use under the Policy. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting is the intentional misspelling of words with intent
to intercept and siphon off
traffic from its intended destination, by preying
on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also L.L. Bean, Inc. v.
Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that
Respondent acted in bad faith by establishing a pattern of registering
misspellings
of famous trademarks and names).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <divastaz.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
July 1, 2003
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