DECISION

Mattel, Inc. v. Angela Knox

Claim Number: FA0403000245916

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Angela Knox (“Respondent”), 29 Woodbine Terrace, Gateshead, Tyne and Wear, NE10 9JU, Great Britain.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ukbarbie.com>, registered with Joker.com.

PANEL

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.

Estella S. Gold as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 12, 2004; the Forum received a hard copy of the Complaint on March 15, 2004.

On March 15, 2004, Joker.com confirmed by e-mail to the Forum that the domain name <ukbarbie.com> is registered with Joker.com and that the Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the 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 March 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 6, 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@ukbarbie.com by e-mail.

A timely Response was received and determined to be complete on March 31, 2004.

An Additional Submission from Complainant was received on April 5, 2004, in a timely manner in accordance with Supplemental Rule #7.

On April 12, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant contends that it owns the registered trademark for BARBIE issued March 20, 1962, and continuously renewed thereafter to the present date.

2. Complainant contends that the domain name in dispute <ukbarbie.com> is confusingly similar to and incorporates Complainant’s registered trademark for BARBIE. 

3. Complainant contends that Respondent is not commonly known by the name “BARBIE” and has acquired no trademark or service mark rights to the domain name in dispute. 

4. Complainant contends that because www.ukbarbie.com has links to sites which sell doll merchandise, the Respondent’s site is a commercial site.

5. Complainant contends that Respondent’s use of the domain name in dispute prevents Complainant from using this domain name for its own legitimate business.

B. Respondent

1. Respondent contends that her website is not confusingly similar to Complainant’s trademark because the website contains a disclaimer disassociating Respondent from Complainant.

2. Respondent contends that her use of the domain name since 1997 was appropriately selected and is well known within the UK doll-collecting community.

3. Respondent contends that her site is not commercial in that she does not sell any products on her site and has never done so.

4. Respondent contends that the service she offers visitors to her site include links to authorized Mattel dealers with information regarding new doll releases, and which Barbie dolls are available to buy in which stores in the United Kingdom.

FINDINGS

1. The registration of the mark BARBIE is undisputed.

2. Respondent’s disputed domain name <ukbarbie.com> incorporates within it the entirety of the registered trademark, plus a geographic identification for “United Kingdom”. 

3. There is no business relationship between Complainant and Respondent, and there are no allegations that Respondent has Complanant’s authority in the operation of her website. 

4. There is no evidence submitted that Respondent has a pattern of domain name registrations in bad faith, nor any effort to sell the domain name in dispute or for commercial gain.

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.

Identical and/or Confusingly Similar

Complainant provides evidence of registration and use in commerce of its mark.  The Panel construes this evidence as proof that Complainant has rights in the BARBIE mark.  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).

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.  The only difference is the addition of the letters “uk.”  The Panel finds that the addition of these letters does not significantly distinguish the domain name from the mark.  Even though the letters “uk” are a common abbreviation for United Kingdom, a domain name that concatenates a geographic term with another’s mark does not significantly distinguish the domain name from the mark.  See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).

Rights or Legitimate Interests

Respondent claims that it is not using the disputed domain name for commercial gain.  The Panel finds that Respondent’s use constitutes fair use, pursuant to Policy 4(c)(iii).  See Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that Respondent has rights and legitimate interests in the domain name where Respondent made a non-commercial use of BAJABOATS.COM and received no funds from users of the site connected to the domain name); see also New York Press v. New York Press, FA 94428 (Nat. Arb. Forum May 18, 2000) (finding that Respondent's use of the its website for review and criticism of the New York press (media) and the fact that he applied to the U.S. Patent and Trademark Office for the NEW YORK PRESS mark, for use with his online publication is evidence that he began to use the domain name for a legitimate non-commercial use); see also Springsteen v. Burgur, D2000-1532 (WIPO Jan. 25, 2001) (finding no likelihood of confusion between common law mark Bruce Springsteen and <brucespringsteen.com> because even the relatively unsophisticated Internet user would realize that not every domain bearing the name Bruce Springsteen is an official site).

Registration and Use in Bad Faith

Since the Complainant has failed to show that the Respondent has no rights or legitimate interest in respect of the domain name, this issue is not discussed further, as all three elements are required under ICANN policy.  

Furthermore, Complainant asserts claims under the ACPA and the anti-dilution portion of the Lanham Act, as well as alleging that it has proceeded with the UDRP to protect its trademark rights.  The Panel finds that this Complaint is outside of the scope of the UDRP.  See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts); see also AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement "are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else").  For this reason, the arguments under the ACPA and the anti-dilution portion of the Lanham Act are not addressed in this Decision.

DECISION

Complainant, having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

___________________________________________________

Estella S. Gold, Panelist
Dated: April 21, 2004

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