DECISION

Mattel, Inc. v. Kimjinsun a/k/a No

Claim Number:  FA0404000255569

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Kimjinsun a/k/a NO (“Respondent”), 481 Sanggalri Giheungub, Yonginsi kyonggido, Korea 449958.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <happybarbie.com>, registered with Gabia, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically April 14, 2004; the Forum received a hard copy of the Complaint April 15, 2004.

On April 18, 2004, Gabia, Inc. confirmed by e-mail to the Forum that the domain name <happybarbie.com> is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia,Inc. verified that Respondent is bound by the Gabia, Inc. 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 April 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 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@happybarbie.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 May 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <happybarbie.com>, is confusingly similar to Complainant’s BARBIE mark.

2. Respondent has no rights to or legitimate interests in the <happybarbie.com> domain name.

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

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

FINDINGS

Complainant established with extrinsic proof in this proceeding that it owns numerous registrations for the BARBIE trademark with the United States Patent and Trademark Office (“USPTO”) including registration number 689,055 issued on December 1, 1959, for the BARBIE mark.  Complainant later 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 others. 

Complainant uses the internationally known BARBIE mark in connection with a variety of goods including the famous “Barbie Doll,” other toys, clothes, accessories, CD-ROM games, and songs.

Respondent registered the disputed domain name <happybarbie.com> on June 10, 2001.  Respondent uses the domain name to host a website that offers doll clothing for sale.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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.

Identical to and/or Confusingly Similar

As a result of Complainant’s numerous U.S. registrations for the BARBIE mark, Complainant has shown rights in the BARBIE mark under the Policy.  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.”).

Complainant also has shown that the disputed domain name contains in its entirety Complainant’s famous BARBIE mark.  Respondent has merely added the word “happy” to Complainant’s BARBIE mark.  Such an addition fails to sufficiently distinguish the disputed domain name from the BARBIE mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); 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).

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

Rights to or Legitimate Interests

Complainant fully established that it has legal and common law rights in the BARBIE mark and alleged that Respondent has no such rights.  Respondent did not file a Response to the Complaint.  The Panel may find in such cases that a Respondent has made an implicit admission that it lacks rights to and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  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).

Furthermore, Respondent has not shown and most likely cannot show that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  In any event, Complainant alleged that it did not authorize Respondent to use its BARBIE mark in a domain name or in any other way. See 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); see also 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 Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In addition, Respondent is using the disputed domain name that contains Complainant’s well-know BARBIE mark to sell goods relating to dolls, goods that are of the same kind that Complainant has sold for many decades under the BARBIE mark. Respondent has incorporated a competitor’s mark for the purpose of selling goods that compete with that competitor, in this case, Complainant.  Therefore, 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) and is not making a legitimate noncommercial or fair use of it pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

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

Registration and Use in Bad Faith

Both Complainant and Respondent sell goods within the same commercial market and they are, therefore, competitors.  Respondent has registered a domain name that incorporates the mark of its competitor and offers its competing goods at the domain name.  Such registration and use is evidence that Respondent registered the disputed domain name <happybarbie.com> primarily to disrupt the business of its competitor, which is bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

In addition to the foregoing, Respondent’s registration of a domain name confusingly similar to its competitor’s mark is also evidence that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s famous BARBIE mark, which is an indicator of bad faith under Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

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 <happybarbie.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 6, 2004

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