DECISION

Mattel, Inc. v. Barbie of Cleveland a/k/a Barbie Beeler

Claim Number:  FA0403000248741

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Barbie of Cleveland a/k/a Barbie Beeler (“Respondent”), 235 Fair Street, Berea, OH 44017.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <escortbarbie.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 22, 2004; the Forum received a hard copy of the Complaint on March 23, 2004.

On March 23, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <escortbarbie.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 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@escortbarbie.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 April 29, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <escortbarbie.com> domain name is confusingly similar to Complainant’s BARBIE mark.

2. Respondent does not have any rights or legitimate interests in the <escortbarbie.com> domain name.

3. Respondent registered and used the <escortbarbie.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant registered the BARBIE trademark with the United States Patent and Trademark Office (“USPTO”) on December 1, 1959 (Reg. No. 689055).  Complainant subsequently registered numerous other BARBIE-related marks including registration numbers: 728,811 (issued Mar. 20, 1962), 741,208 (issued Nov. 27, 1962), 741,649 (issued Dec. 4, 1962), and 768,331 (issued Apr. 21, 1964), among countless others.  Complainant uses the BARBIE mark in connection with a variety of goods including dolls, toys, clothes, accessories, CD-ROM games, and songs.

Respondent registered the disputed domain name <escortbarbie.com> on August 30, 2001.  The domain name is being used to host a website that offers escort companionship in the Cleveland, Ohio geographic area.  The website includes a pornographic image.

In addition, the disputed domain name was the subject of an action filed in the U.S. District Court for the Southern District of New York on May 24, 2002.  Complainant was granted a default judgment on August 5, 2002.  However, the registrar Melbourne IT refused to enforce the judgment. See Mattel, Inc v. Beeler, Civil Action No. 02 Civ. 3988 (S.D.N.Y. May 24, 2002).

Complainant has established rights in the BARBIE mark as a result of Complainant’s numerous registrations with the USPTO and the mark’s continuous and longstanding use. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”).

Domain names that incorporate a third-party’s mark and merely add a generic or descriptive term to the mark have consistently been held to be confusingly similar to the mark under the Policy.  In the instant case, the disputed domain name <escortbarbie.com> is confusingly similar to Complainant’s BARBIE mark because the name contains Complainant’s mark in its entirety and has merely added the term “escort.” See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Notwithstanding Complainant’s establishment of Policy ¶ 4(a)(i), the Panel finds that the District Court for the Southern District of New York has already ruled on the domain name at issue in this case. Consistent with UDRP Rule 18(a), the Panel chooses to use its discretion in denying the Complaint in the instant case.  See NAT Int’l v. Suez FA 105930 (Nat. Arb. Forum May 15, 2002) (finding that because prior to the commencement of the administrative proceeding, a legal proceeding had already resulted in a judgment determining the very issue raised for decision by the Panel, the Panel should exercise its discretion and terminate the proceedings); see also AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative Panel’s decision regarding a UDRP dispute until the court proceeding is resolved.).

Therefore, this Panel chooses not to act when there is a U.S. district court that has previously issued a judgment regarding the disputed domain name and the court presumably maintains a continuing jurisdiction to enforce its judgment. Accordingly, the Complainant may choose to pursue enforcement of the U.S. district court’s order.

DISCUSSION

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.

DECISION

Having considered the evidence presented by the parties, the Panel concludes that jurisdiction should be declined.

James A. Carmody, Esq., Panelist

Dated:  May 12, 2004

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