DECISION

Mattel, Inc. v. BC Developpement Ken

Claim Number:  FA0403000248953

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is BC Developpement Ken, ch de la maladaire 22, Bevaix, Neuchatel 2022 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ken-de-mattel.com>, registered with Namesecure.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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 23, 2004; the Forum received a hard copy of the Complaint on March 24, 2004.

On March 26, 2004, Namesecure.com confirmed by e-mail to the Forum that the domain name <ken-de-mattel.com> is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.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 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 19, 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@ken-de-mattel.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 27, 2004,  pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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. 1. Respondent’s <ken-de-mattel.com> domain name is confusingly similar to Complainant’s MATTEL mark.

1. 2. Respondent does not have any rights or legitimate interests in the <ken-de-mattel.com> domain name.

2. 3. Respondent registered and used the <ken-de-mattel.com> domain name in bad faith.

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

FINDINGS

Complainant registered the MATTEL mark with the United States Patent and Trademark Office (“USPTO”) on April 21, 1998 (Reg. No. 2,152,707).  The MATTEL mark is used in connection with a wide variety of goods and services including: audio and video cassettes, screensaver programs, merchandising kiosks for use with computer software, coin-operated arcade games, electronic hand-held games, computer game joysticks, and for providing access to interactive computer on-line services featuring games, stories, and directories for toys, games and sporting goods.

Complainant registered the KEN mark with the USPTO on January 30, 1962 (Reg. No. 726,935). The KEN mark is used in connection with a “boy doll.”

Respondent registered the disputed domain name <ken-de-mattel.com> on August 22, 2000.  The domain name is used to host a variety of links to commercial websites.  In an e-mail dated March 11, 2004, Respondent demanded $800 for the transfer of the domain name registration.

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) (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(1) (2) Respondent has no rights or legitimate interests in respect of the domain name; and

(2) (3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in both the MATTEL and KEN marks as a result of its registrations of the marks with the USPTO. 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 Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The disputed domain name <ken-de-mattel.com> includes Complainant’s combined marks KEN and MATTEL.  The domain name has also included hyphens and the letters “de” to separate Complainant’s marks.  The addition of hyphens to a domain name is irrelevant for determining confusing similarity under the Policy.  Likewise, the addition or omission of minor grammatical terms, in this case “de,” has not been sufficient to overcome the confusing similarity that exists between domain names and third-party marks. Thus, the Panel finds that the disputed domain name, which contains two of Complainant’s registered marks, is confusingly similar to the marks under Policy ¶ 4(a)(i). See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); cf. Saul Zaentz Co. v. Dodds, FA 233054, (Nat. Arb. Forum Mar.16, 2004) ("The omission of the preposition and the definite article fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).").

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  As a result, the Panel presumes that Respondent lacks rights to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

There is no evidence and nothing in the record indicates that Respondent is commonly known by the disputed domain name <ken-de-mattel.com> pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

Respondent is not using the disputed domain name in connection with 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) because Respondent is capitalizing from the fame and goodwill associated with Complainant’s marks to attract Internet-users to an unrelated commercial website. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent demanded $800 from Complainant for the transfer of the domain name registration.  In certain instances, this would evidence circumstances indicating a respondent acquired a domain name primarily for the purpose of selling the domain name registration to a complainant for valuable consideration in excess of its documented out-of-pocket expenses pursuant to Policy ¶ 4(b)(i).  However, the registration information for the disputed domain name lists Respondent’s term of registration for the domain name as being eleven years.  The costs associated with an eleven-year registration term and additional expenses that accompany such a registration term could reach the value that Respondent requested from Complainant.  Thus, Complainant has not established Policy ¶ 4(b)(i) in this case. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (refusing to transfer the domain name where Complainant fails to prove that the consideration in Respondent's offer of transfer is in excess of Respondent's out-of-pocket costs directly related to the domain name).

However, Respondent registered a domain name that incorporates two of Complainant’s registered marks and then used the name to host a website that links to a variety of commercial websites, presumably for commercial gain.  Such registration and use is evidence that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks pursuant to Policy ¶ 4(b)(iv). See 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 used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The fact that Respondent registered a domain name that contains two of Complainant’s registered marks is also evidence that Respondent registered the domain name with actual knowledge of Complainant’s rights in the MATTEL and KEN marks, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Complainant has established Policy ¶ 4(a)(iii).

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 <ken-de-mattel.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: May 10, 2004

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