DECISION

Mattel, Inc. v. Good Time Tickets a/k/a GTT a/k/a Marc Simon

Claim Number: FA0406000282802

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Good Time Tickets a/k/a GTT a/k/a Marc Simon (“Respondent”), 6501 Sunset Boulevard, Hollywood, CA 90028.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <hotwheelheaven.com> and <hotwheeltrader.com>, registered with Network Solutions, Inc. and Bulkregister, Llc., respectively.

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.

Dennis A. Foster as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 3, 2004; the Forum received a hard copy of the Complaint on June 4, 2004.

On June 4, 2004 and June 9, 2004, Network Solutions, Inc. and Bulkregister, Llc., respectively, confirmed by e-mail to the Forum that the domain names  <hotwheelheaven.com> and <hotwheeltrader.com> are registered with Network Solutions, Inc. and Bulkregister, Llc., respectively, and that Respondent is the current registrant of the names.  Network Solutions, Inc. and Bulkregister, Llc. have verified that Respondent is bound by the Network Solutions, Inc. and Bulkregister, Llc. registration agreements 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 June 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 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@hotwheelheaven.comand postmaster@hotwheeltrader.com by e-mail.

A timely Response was received and determined to be complete on June 30, 2004.

On July 9, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

--Complainant owns the trademark for HOT WHEELS and has received U.S. Certificate of Trademark Registration Nos. 843, 156 for scale model toys; 884,563 for toy miniature automobiles and accessories; and 1,810,905 for toy vehicles and race sets.  These registrations are valid and subsisting. 

--The disputed domain names are confusingly similar to and dilutive of Complainant's registered trademark for HOT WHEELS within the meaning of the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. Sect. 1125(d).

--Respondent is not commonly known by the name HOT WHEELS and has acquired no trademark or service mark rights to the <hotwheelheaven.com> and <hotwheeltrader.com> domain names.

--Respondent has not made a legitimate non-commercial or fair use of these domain names.  The URL address <hotwheelheaven.com> provides links to various HOT WHEELS sites, classified ads, message boards, e-mail accounts, photos and games.  The URL address <hotwheeltrader.com> is not being used at this time.

--In connection with its HOT WHEELS line of products, Complainant uses many domain names, including, but not limited to, <hotwheels.com>, <planethotwheels.com> and <hotwheelscollectors.com>.

--Respondent has used the <hotwheelheaven.com> domain name with the intent to trade on the goodwill Complainant has in its HOT WHEELS products, and to enhance the commercial value of his own services.  Respondent also registered the <hotwheeltrader.com> domain name, which he had used to promote a business dealing in die-cast cars. 

--By using the <hotwheelheaven.com> and <hotwheeltrader.com> domain names, Respondent has diluted, and will continue to dilute, the distinctive quality of the HOT WHEELS trademark by lessening its capacity to identify Complainant's products and services in violation of the Federal Anti-Dilution Act, 15 U.S.C. Section 1125 (c).  Respondent's use of the <hotwheelheaven.com> and <hotwheeltrader.com> domain names has infringed and will continue to infringe the HOT WHEELS trademark in violation of 15 U.S.C. Section 114(a).

--By letter and e-mail dated March 25, 2004, Complainant demanded that Respondent transfer ownership of the <hotwheelheaven.com> domain name to Complainant, as well as remove certain banners from the website.

--Respondent replied, stating that he had previously reached an agreement with one of Complainant's attorneys regarding his ability to keep the <hotwheelheaven.com> domain name. 

--Complainant did not agree to allow Respondent to retain ownership of  <hotwheelheaven.com>.  Complainant replied to these concerns in an e-mail dated April 9, 2004.  On this date, Respondent re-registered the <hotwheeltrader.com> domain name.

--After noticing the removal of certain banners from <hotwheelheaven.com>, Complainant again e-mailed Respondent demanding the removal of additional banners as well as the transfer of the domain name.  Complainant was not aware of the re-registration of <hotwheeltrader.com> at that time. 

--The disputed domain names should be transferred to Complainant.

B. Respondent

--The <hotwheelheaven.com> domain name has a legitimate and bona fide non-commercial use to exhibit Respondent's personal collection of die cast miniature cars.  Respondent displays photographs taken of die cast miniature cars from his personal collection.  Respondent is not offering for sale, distribution, or advertising any goods or services likely to cause confusion, or to cause mistake, or to deceive, and is in compliance with 15 U.S.C. Sect. 1114.  <Hotwheeltrader.com> is no longer in existence.  ICANN Rule 5(b)(i).

--Respondent registered the disputed domain names on September 20, 1996 and they were not designed to divert consumers from the trademark holder's site.  The site consists of Respondent's personal collection taken from personal photographs of his personal property.  ICANN Rule 5(b)(i).

--The site is used solely for the purpose of exhibiting Respondent's personal photographs and collection and for posting conversations with other collectors.  In addition to the use, there are links to other sites added by site users for the purpose of information sharing on other collector's sites.  ICANN Rule 5(b)(i).

--Respondent gained ownership and possession of the domain name on September 20, 1996 by legal means.  ICANN Rule 5(b)(i).

--Respondent has not received any pecuniary gain from the website.  The site is strictly to showcase his personal collection.  Respondent shows no intent of diverting consumers from the trademark holder's site or of tarnishing the name. ICANN Rule 5(b)(i).

--Respondent is making a bona fide non-commercial or fair use of the domain name and has not used the site for the purpose of selling, trading, transferring, or assigning goods or services.  Respondent is not diluting or tarnishing the name and only showcases his personal collection as a collector of miniature die cast cars.  ICANN Rule 5(b)(i).

--Complainant's request for transfer of the disputed domain names should be denied. 

FINDINGS

Complainant is a large and prominent toy manufacturer.  Respondent is an individual who is a HOT WHEELS model car aficionado.  Although Respondent claims to dabble in model cars only as a hobby, the Panel finds the content of Respondent's websites and the letters exchanged between Complainant and Respondent show that model cars are a serious commercial interest for Respondent.

Complainant warned Respondent in writing on several occasions, notably on March 25, 2004 and April 9, 2004 and also in early 2002 that Respondent's websites at the <hotwheelheaven.com> and <hotwheeltrader.com> domain names infringed Complainant's HOT WHEELS trademark rights.  Respondent tried to mollify Complainant by modifying some of the content of the website, and by promising to transfer <hotwheeltrader.com> but then re-registering it.    

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; and

(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 has exhibited copies of its United States federal HOT WHEELS trademark registrations, including notably No. 843,156 for scale model toys with a first use in 1967.  The two domain names, <hotwheelheaven.com> and <hotwheeltrader.com>, both have as their major component Complainant's HOT WHEELS trademark.  The Panel finds the disputed domain names are confusingly similar to Complainant's HOT WHEELS trademark.  Respondent is well aware of this similarity and offered to put a disclaimer on its website.

Respondent has added the words "heaven" and "trader", but in the context of selling model cars, both words are descriptive add-ons.  "Trader" obviously denotes a website where there is buying, selling and perhaps bartering of the HOT WHEELS model cars. Furthermore, when we consider that Complainant operates a model car web site called <planethotwheels.com>, it can be seen that Respondent's "heaven" is a logical add-on that mimics Complainant's "planet".  Both denote web sites where HOT WHEELS model car aficionados can be in their element.  Adding "heaven" and "trader" do not allow Respondent to create a distinctive mark or domain name of its own.  In this regard, see Compaq Information Technologies Group L.P. v. Dealer Direct, Inc., FA 97062 (Nat. Arb. Forum June 14, 2001) (finding that the domain names <compaqdirect.com>, <compaqonline.com> and <compaqdirectplus.com> are logical add-ons to the trademark COMPAQ). 

The Panel thus finds Complainant has carried its burden of proof under Policy ¶ 4(a)(i) to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.   

Rights or Legitimate Interests

Complainant contends Respondent has no right to use the disputed domain names, and Complainant has written as much to Respondent on several occasions. 

For his part, Respondent contends he is making a fair use of the disputed domain names: he says he uses them to show his private collection of model cars and makes no money off the websites.  This, Respondent contends, should qualify as permissible fair use under the Policy ¶ 4(c)(iii).  However, the Panel does not believe Respondent's use of the disputed domain names is non-commercial.  On the contrary, the website at <hotwheelheaven.com> is replete with advertisement banners and invites the public to click through to other web sites that also are commercial.  The Panel believes it proper to infer that Respondent derives income from advertising and from funneling potential clients to commercial websites connected with model cars and other merchandise.

In a comparable previous case under the Policy that involved a Complainant aircraft manufacturer and a private individual who dealt in model airplanes, the Panel also rejected a "fair use" contention under this rationale.  The Panel noted, "…the business being operated at the website…is clearly and unquestionably for commercial gain…to sell model aircraft." Lockheed Martin Corporation v. NBPro Hosting, D2003-0859 (WIPO December 18, 2003). For a further case under the Policy rejecting that using the disputed domain for a commercial web site could be considered fair use, see Lockheed Martin Corporation v. Ning Ye, D2000-1733 (WIPO May 17, 2001).  

The Panel finds Complainant has carried its burden of proof to show Respondent has no legitimate rights or interests in the disputed domain names under Policy ¶ 4(a)(ii).        

Registration and Use in Bad Faith

Complainant contends Respondent is violating the bad faith provisions of  Policy ¶ 4(b)(iv) in that Respondent is using Complainant's HOT WHEELS trademark to attract the public to Respondent's website for commercial gain.  The Panel agrees.  Complainant is a large company that has built many notable toy trademarks, including the HOT WHEELS trademark at issue in this case.  Respondent is an individual seeking to make money on advertising and customer procurement in the field of model toys.  Respondent reasoned that it could jump-start its business by folding Complainant's well-known trademark into Respondent's disputed domain names.  The Panel concludes Complainant has carried its burden of proof to show Respondent registered and is using the disputed domain name in bad faith per 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 <hotwheelheaven.com> and <hotwheeltrader.com> domain names be TRANSFERRED from Respondent to Complainant.

Dennis A. Foster, Panelist
Dated: July 23, 2004

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