DECISION

Mattel, Inc. v. Nam Chang Mo

Claim Number:  FA0404000255568

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Nam Chang Mo (“Respondent”), Suwoon B/D 852-20, Bangbae-dong, Seoul, Korea 137069.

REGISTRAR AND DISPUTED DOMAIN NAME

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

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 14, 2004; the Forum received a hard copy of the Complaint on April 15, 2004. The Complaint was submitted in both Korean and English.

On April 19, 2004, Gabia, Inc. confirmed by e-mail to the Forum that the domain name <fashionbarbie.com> is registered with Gabia, Inc. and that Respondent is the current registrant of the names. Gabia, Inc. has 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, in Korean language, 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@fashionbarbie.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 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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.

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

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 <fashionbarbie.com> domain name is confusingly similar to Complainant’s BARBIE mark.

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

3. Respondent registered and used the <fashionbarbie.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 that relate to the famous BARBIE dolls.

Respondent registered the disputed domain name <fashionbarbie.com> on October 24, 2001.  Respondent is using the domain name to host a website that offers “Barbie” merchandise 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the BARBIE mark as a result of its numerous registrations of the mark with the USPTO.  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.”).

A domain name that incorporates a third-party mark and merely appends a generic or descriptive term to the name has consistently been held to be confusingly similar to the third-party mark under the Policy.  In this case, the disputed domain name contains Complainant’s BARBIE mark and has merely attached the generic or descriptive term “fashion” to the mark.  Consistent with prior decisions under the Policy, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark. See 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); 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 or Legitimate Interests

The Panel construes Respondent’s failure to respond to the Complaint as an implicit admission that Respondent lacks rights 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Using a domain name confusingly similar to a third-party mark to sell unauthorized goods offered by the third-party under its mark has been regularly found to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Here, the disputed domain name is confusingly similar to Complainant’s BARBIE mark and is used to sell unauthorized goods associated with Complainant’s BARBIE products.  Such use does not evidence Respondent’s rights or legitimate interests in the domain name.  See Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent, a reseller of Complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to Complainant’s mark); see also Jaccard Corp. v GDC, FA 152463 (Nat. Arb. Forum June 20, 2003) (stating that, as there was “no evidence of an agreement between Complainant and Respondent whereby Respondent has either or both of a privilege to have registered, and a privilege to use, the mark that is the subject of one or more of Complainant's trademarks as a domain name,” Respondent had no rights or legitimate interests in the disputed domain name).

Moreover, the evidence within the record does not indicate that Respondent is commonly known by the disputed domain name under 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 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).

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

Registration and Use in Bad Faith

Respondent is using a domain name confusingly similar to Complainant’s BARBIE mark to profit from the sale of goods associated with Complainant’s mark.  Such a relation between the domain name and the goods offered at the website creates substantial confusion for Internet users.  Therefore, the evidence suggests that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), which requires a respondent to intentionally attempt to attract Internet users to a website for commercial gain by creating a likelihood of confusion with a complainant’s mark.  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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); 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).

Moreover, Respondent knew or should have known about Complainant’s rights in the BARBIE mark at the time it registered the disputed domain name, which can also evidence bad faith registration and use of a domain name.  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) (“there 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 <fashionbarbie.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  June 3, 2004

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