WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mattel, Inc. v. Maria Morariu
Case No. D2011-2229
1. The Parties
The Complainant is Mattel, Inc. of El Segundo, California, United States of America, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Maria Morariu of Sahateni, Buzau, Romania.
2. The Domain Names and Registrars
The disputed domain name <barbiedollgames.net> is registered with Moniker Online Services, LLC.
The disputed domain name <jocuri-barbie.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2011. On December 19, 2011, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com and Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On the same date, Moniker Online Services, LLC and CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint 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 December 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2012.
The Center appointed Luca Barbero as the sole panelist in this matter on January 25, 2012. 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 is a company organized and existing under the laws of the United States of America and is a well-known company worldwide in the field of toys. One of the Complainant’s most successful products is the BARBIE fashion doll, which was introduced in March 1959 at the American International Toy Fair in New York and is nowadays sold throughout the world.
The BARBIE mark, alone and in combination with other words and design elements, is registered extensively as a trademark and service mark in the United States and in many other countries in the world.
The Complainant is the owner inter alia of the following trademark registrations for BARBIE (word mark):
- United States of America Trademark Nos. 689055 originally filed on July 2, 1958, in international class 28; 741208, originally filed on October 18, 1960, in international class 28; 768331, originally filed on August 30, 1962, in international class 18; 772298, originally filed on October 28, 1963, in international class 14; 814995, originally filed on January 7, 1965, in international classes 9, 16 and 28; and 813733, originally filed on January 28, 1965, in international class 20;
- European Community Trademark Nos. 170019 filed on April 1, 1996, in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28 and 41; and 7004468, filed on June 19, 2008, in classes 4, 8 and 27;
- Australian Trademark Nos. 269645, registered on June 26, 1973 and 555833, registered on May 13, 1991, in class 28;
- Hong Kong Trademark No. 19650938, registered on October 6, 1965, in class 28.
The Complainant is furthermore the registrant of a number of domain names, including <barbie.com>, registered on June 19, 1996 and many other domain names consisting in or including the mark BARBIE, such as <barbie.net>, <barbiedoll.info>, <barbiedoll.com>, <barbiedoll.net>, and <barbieworld.com>.
The Respondent registered the disputed domain names <jocuri-barbie.com> and <barbiedollgames.net> on March 3, 2007 and January 30, 2010, respectively.
5. Parties’ Contentions
The Complainant points out that, since its introduction in 1959, the BARBIE branded products have grown tremendously and informs the Panel that sales of BARBIE branded goods and services in 2010 were “hundreds of millions of dollars”.
The Complainant highlights that, by virtue of its long and extensive use, the BARBIE mark has become famous, and it is one of the best known trademarks in the world today, being well recognized as a symbol of the highest quality in fashion dolls and related goods and services.
The Complainant sells its products and services through a number of channels of trade including on the Internet, through its own website, Amazon.com and online stores maintained by Wal-Mart, K-Mart, Target, and Toys-R-Us.
The Complainant contends that the disputed domain names are confusingly similar to the trademark BARBIE in which the Complainant has rights as they reproduce the well-known trademark BARBIE in its entirety, with the addition of the generic terms “doll”, “games” and “jocuri”, which is the Romanian for “games”.
With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent cannot conceivably claim to have been unaware of the famous BARBIE trademark, or the fact that the mark is owned by the Complainant, nor can the Respondent deny that it did not have permission or authorization to use BARBIE as part of a domain name or in any other way.
The Complainant states that the Respondent is not making legitimate noncommercial or fair use of the disputed domain names “without intent for commercial gain” and highlights that the website maintained at “www.barbiedollgames.net” provides online games and, although the home page of the website displays information to suggest that the games available are genuine BARBIE games, none of the games available on such website are BARBIE games. The Complainant highlights that the website maintained at “www.barbiedollgames.net” contains links to third party sites not affiliated with the Complainant, such as “www.zwinky.com” and “www.mytopfreegames.com”. On the Complainant’s information and belief, by providing links to these sites, the Respondent is receiving compensation or other benefit. The Complainant also contends that the Respondent receives revenue from the Google’s AdChoices advertisements placed on its website “www.barbiedollgames.net”.
The Complainant also underlines that advertisements to third party sites which generate revenues for the Respondent are also published on the website “www.jocuri-barbie.com”.
The Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain names, especially given the fame of the BARBIE mark.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent registered the disputed domain names with full knowledge of the Complainant’s rights therein.
The Complainant contends that the Respondent was on constructive notice of the Complainant’s famous BARBIE mark by virtue of section 22 of The Lanham Act, 15 U.S.C. § 1072, in the United States and that it is further inconceivable that the Respondent was unaware of the BARBIE mark, which has been famous for decades throughout the world by virtue of the Complainant’s long, exclusive and ubiquitous use thereof. Furthermore, the Complainant relies on numerous CTM registrations for its BARBIE mark, covering also Romania, where the Respondent is based.
The Complainant states that the Respondent’s selection of the disputed domain names could not have been in anything other than bad faith since there is no reason for the Respondent to use the trademark BARBIE except to confuse the relevant purchasing public into believing that the Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the Complainant and to generate income from the links and advertisements displayed on the sites corresponding to the disputed domain names.
Moreover, the Complainant points out that the Respondent is also in violation of Moniker’s Registration Agreement which applies to the disputed domain name <barbiedollgames.net>, since, under paragraph 12 of that Agreement, the Respondent warranted and agreed that it would use “to the best of [its] knowledge and belief neither the registration of [its] domain name nor the manner in which [it] intend[s] to use such domain name will directly or indirectly infringe, or conflict with, the legal rights of a third party, including their intellectual property rights”.
With reference to the use of the disputed domain names, the Complainant states that the Respondent is using the disputed domain name <barbiedollgames.net> to resolve to a website where unauthorized BARBIE branded games and games unrelated to the Complainant are promoted and points out that this type of activity has been found to constitute bad faith use and registration in similar UDRP cases.
The Complainant also states that the disputed domain name <jocuri-barbie.com> is used in bad faith to attract Internet users with the purpose of having such users visit other sites affiliated with the Respondent, including poker sites and sites for MARIO branded games.
The Complainant asserts that there is no reason for the Respondent to use the mark BARBIE, except to generate income from the links and advertisements displayed on the websites corresponding to the disputed domain names, and highlights that the Respondent purposely registered <barbiedollgames.net> and <jocuri-barbie.com> for commercial gain.
Furthermore, the Complainant states that the Respondent’s use of the disputed domain names is blatantly opportunistic and that the Respondent has infringed upon and diluted the Complainant’s registered trademark and service mark BARBIE with the intent and purpose of creating a likelihood of confusion and trading upon the Complainant’s considerable goodwill and reputation.
The Complainant concludes that the Respondent has caused and will cause the Complainant serious and irreparable damage unless the disputed domain names are transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for BARBIE in the United States, Europe and other countries.
The Panel finds that the disputed domain names are confusingly similar to the trademark owned by the Complainant since, pursuant to a number of prior decisions rendered under the Policy, the addition of common, dictionary, descriptive terms to a trademark is not sufficient to prevent the confusing similarity.
See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to the BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
See also the following previous UDRP decisions, in which the domain names were found confusingly similar to the trademark BARBIE: Mattel, Inc. v. Andrew Cuthbert, NAF Claim No. 1214706 (<barbie-girl.biz>), finding that “Respondent is commercially gaining from the confusion created by using Complainant’s famous BARBIE mark in the disputed domain name”), Mattel, Inc. v. Barbwired Promotions, NAF Claim No. 0948479, finding the domain name <barbiedoll1.com> confusingly similar to the trademark BARBIE; Mattel, Inc. v. Dan Rukes, NAF Claim No. 0099678 (<barbiedollbroker.com>, <barbiedolltrader.com>, <barbiedolltraders.com>, and <barbiedollweb.com>) and Mattel, Inc. v. Hoang Tuyen, NAF Claim No.1297994 (<gamesbarbie.net>).
More in particular, the addition of the words “doll”, “games” and “jocuri” (which is the Romanian for “games”) is particularly apt to increase the confusing similarity with the Complainant as these terms are descriptive of the Complainant’s products. See, along these lines, Nintendo of America, Inc. v.Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976, finding the domain name <pokemontrader.org> confusingly similar to the mark POKEMAN (“the addition of trader – a word descriptive of one of Complainant’s most popular products - at the end of the Domain Name only exacerbates this confusion”); and Volvo Trademark Holding AB v. Nick Bauer, WIPO Case No. D2002-1025, regarding the domain name <newvolvoparts.com> (“By incorporating Complainant’s mark with the generic term ‘new parts’, the Domain Name will create association with the same kind of products identified by the VOLVO trademark, thus increasing the likelihood of confusion”).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 0852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names or by a name corresponding to the disputed domain names.
The Panel notes that the disputed domain names are pointed, as highlighted by the Complainant, to websites featuring advertisements and several links to other sites providing online games, some of which are owned by the Respondent (amongst others, “www.jocuricarti.net”, “www.jocuripoker.org”, “www.jocuricazinou.com” and “www.jocuri-noroc.com”). The Panel finds that this use of the disputed domain names cannot be considered a bona fide offering of goods or services, or a legitimate, noncommercial or fair use of the disputed domain names.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain names; or
(ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the use of the trademark BARBIE since 1959, the amount of advertising and sales of the Complainant’s products, and the well-known character of the trademark BARBIE worldwide, the Respondent was very likely aware of the Complainant’s trademark.
Furthermore, the Panel observes that the disputed domain names point to websites featuring the Complainant’s BARBIE mark, copyrighted BARBIE images, and BARBIE titled games, although all links and games are unrelated to the Complainant, which further indicates that the Respondent must have been clearly aware of the Complainant’s trademark and products.
The Panel shares the view of a number of UDRP panels findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd, WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”. See also Edgar Rice Burroughs, Inc. v. MySexPortal.net, Dejan Nikitovic, WIPO Case No. D2002-1169, regarding the domain name <tarzansex.com> (“It is also to be noted that the circumstances of bad faith are not limited to those set out in paragraph 4b(i) – (iv). This can also occur when a domain name is ‘obviously connected with such a well-known product that it is used by someone with no connection with the product which suggests opportunistic bad faith”).
The Panel also finds that Internet users, in light of the contents of the websites linked to the disputed domain names, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. Moreover, in all likelihood, the Panel believes that the Respondent profits by earning revenues from sponsored advertisements published on the websites corresponding to the disputed domain names and from the diversion of Internet traffic to its own websites.
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s sites and services.
See, among others, the following UDRP cases, decided in favor of the Complainant: Mattel, Inc. v. Bucsek Bernadett, NAF Claim No. 1390980 (“Respondent’s <barbiebaba.com> domain name attempts to pass itself off as associated with Complainant by featuring Complainant’s BARBIE mark, copyrighted BARBIE images, and BARBIE titled games, although all links and games are unrelated to Complainant. Internet users searching for Complainant online may find Respondent’s website instead and become confused as to Complainant’s affiliation with the website and featured content.”), and Mattel, Inc. v. Nerdesin, Claim Number NAF Claim No. 1339300, regarding the domain name <barbieoyunlari.org> (“The Panel finds that Respondent’s use of the disputed domain name to profit from the displayed links to games and puzzles unrelated to Complainant by intentionally attempting to attract Internet users who seek Complainant’s products is evidence of bad faith pursuant to Policy ¶ 4(b)(iv)”).
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and, in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146, “... it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not [a] conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <barbiedollgames.net> and <jocuri-barbie.com> be transferred to the Complainant.
Dated: February 8, 2012