WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mattel, Inc. v. Batyi Bela
Case No. D2011-1598
1. The Parties
The Complainant is Mattel, Inc., of El Segundo, California, United States of America, represented by SBGK Law Office, Hungary.
The Respondent is Batyi Bela of Budapest, Hungary.
2. The Domain Name and Registrar
The disputed domain name <fisherpricejatekok.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On September 22, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 22, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 29, 2011, the Center transmitted by email to the Complainant a request for verification that a copy of the complaint, including any annexes, together with the cover sheet as prescribed by the Provider's Supplemental Rules, was transmitted by email to the Respondent (domain-name holder), in accordance with paragraph 2(b) of the Rules. The Center received on September 29, 2011 confirmation from the Complainant that an email transmission of the complaint, including any annexes, together with the cover sheet, took place. The Center verified that the Complaint together with the confirmation email from the Complainant satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on November 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant in these proceedings is Mattel Inc., a company organized under the Laws of the United States of America. The Complainant is a well known company worldwide particularly in the field of toys with presence in many countries, including the US and Hungary.
Mattel Inc. is the owner – among others – of the following trademarks:
1. FISHER-PRICE, US trademark registration (word mark) (reg. no.: 0832452) date of priority: May 4, 1966, Goods: international classification 28: toys. The trademark is protected in the USA.
2. FISHER-PRICE EU community trademark (word mark) (reg. no.: 006782221) date of priority March 26, 2008, goods in classes 4, 5, 14, 27, 28, 30, 35, 41. The goods in class 28 are: games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. The trademark is protected in the countries of the EU including Hungary.
3. FISHER-PRICE, Hungarian national trademark (reg. no.: 167288), date of priority December 8, 2000, Goods: Class 28: Full scale of toys, toys, playthings, gymnastics-and sports articles, not included in other classes; Christmas tree ornaments. The trademark is protected in Hungary.
Further, always according to the uncontested allegations of the Complainant, the FISHER-PRICE brand is a well-known young children’s toy and early learning brand which began in 1930 in the US. Since around 1997 the Complainant branded all its infant and pre-school products under the FISHER-PRICE name. Further, the Complainant is the registered owner of ‘fisherprice’ domain names, e.g ‘fisherprice.com’, ‘fisher-price.com’, ‘fisherprice.net’, ‘fisher-price.net’, according always to the uncontested allegations of the Complainant.
The Complainant, according to its non-contested allegations, has extensively promoted and advertised its FISHER-PRICE name in Hungary.
The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above.
The disputed domain name <fisherpricejatekok.com> was registered by the Respondent. According to the uncontested allegations of the Complainant, the intention of the Respondent is to benefit and intends to continue benefiting from the goodwill associated with the Complainant’s marks.
The disputed domain name was registered on June 3, 2011.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence that it owns the rights in the trademark FISHER-PRICE. The Complainant’s registrations for the mark all over the world including Hungary and the US, have proven this. The use of the mark in many countries reinforces this ownership. According to the uncontested allegations of the Complainant the mark FISHER-PRICE is well-known, identifying FISHER-PRICE as the source or origin of goods and services, particularly toys, playthings, and others.
The mere fact that the Respondent has added to the FISHER-PRICE mark the descriptive term “jatekok” (“toys” in Hungarian) does not affect the essence of the matter: the disputed domain name wholly incorporates the trademark FISHER-PRICE, registered and owned by the Complainant, and in the circumstances of this case is by itself sufficient to establish criterion of similarity for purposes of the Policy, as many Panels have found in the past, see e.g. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252. Further, the addition of the suffix “com” does not alter the situation.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <fisherpricejatekok.com> is confusingly similar to the Complainant’s trademark FISHER-PRICE.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services. The evidence provided by the Complainant shows that the website associated with the disputed domain name has been used to bait internet users and then switch them to other goods belonging to other toy manufacturers.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has used the disputed domain name as a pay-per-click advertising website to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation, etc., of the website. This shows that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be reinforced by this Panel’s finding that it would, indeed, be highly unlikely that the Respondent’s registration of a domain name that includes the well-known FISHER-PRICE trademark in combination with the words “jatekok” and “com” for use as a pay-per-click website would be mere coincidence. Rather, it seems to this Panel more likely that such registration and use would be motivated by hoped-for capitalization on the trademark connotations of the domain name.
As a consequence of the above, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
The Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <fisherpricejatekok.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: November 3, 2011