WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mattel Inc. v. Above.com Domain Privacy
Case No. D2011-2264
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 Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <barbiedressupgames.net> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2011. On December 22, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 23, 2011, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 9, 2012.
The Center verified that the Complaint together with the amended 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 January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2012.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 8, 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 well-known designer, manufacturer and distributor of toys, games apparel and equipment for babies and children.
One of the Complainant’s most successful products is its BARBIE brand fashion doll, accessories and related services.
The Complainant owns a number of trademarks comprising the word “Barbie” all around the world including among others:
- the United States of America federal trademarks filed before the United States Patent and Trademark Office :
BARBIE, registration no. 689055, registered on December 1, 1959 in class 28, lastly renewed on October 21, 2009;
- BARBIE CHANNEL, registration no. 3890554, registered on December 14, 2010 in class 38;
- the European Community trademark:
BARBIE, no. 007004468, registered on December 18, 2008 in classes 4, 8 and 27;
- The Australian trademark:
BARBIE WORLD, no. 731534, registered on April 7, 1997 in class 28 for which renewal is due by April 7, 2017;
- The Hong-Kong trademark:
BARBIE, no. 19650938, registered on June 19, 1964 in class 28 with expiry date on June19, 2013.
The Complainant also holds different domain names including <barbie.com>, <barbie.net>, <barbiedoll.info>, <barbiedoll.net> and <barbieworld.com>. The Complainant adds that it maintains its main website for BARBIE fashion dolls and related goods and services at “www.barbie.com”.
The Respondent is Above.com Domain Privacy, a domain name registrar. The Panel has no information on the person actually exploiting the disputed domain name.
The disputed domain name <barbiedressupgames.net> was registered on March 1, 2009.
According to the documentary evidences submitted, on the date of the Complaint, the website to which the disputed domain name resolves offered Barbie branded on-line games and other on-line games not related to Barbie products or services. The website also contained hyperlinks to other websites encouraging internet users to purchase on-line games.
On the date of examination of the Complaint by the Panel, the website to which the disputed domain name resolves was inactive and lead to a blank page.
5. Parties’ Contentions
The Complainant contends that since 1959, it has filed numerous trademarks all around the world comprising the word “Barbie” and adds that the BARBIE mark is famous.
The Complainant contends that the disputed domain name is confusingly similar to the BARBIE trademarks in which the Complainant has rights.
The Complainant adds that the Respondent registered the disputed domain name <barbiedressupgames.net> without the permission of the Complainant and does not have a legitimate interest or right in the disputed domain name.
The Complainant contends that the Respondent registered the disputed domain name in bad faith as it is inconceivable that at the time of registration, the Respondent was unaware of the BARBIE mark, which had been famous for decades throughout the world. As for the Complainant, the only purpose for the Respondent to use BARBIE was to generate income from the links and advertisements displayed on its website.
The Complainant adds that the disputed domain name is being used in bad faith and mentions that the Respondent has been involved in many other ICANN proceedings before WIPO and NAF with regards to the unauthorized use of other domain names including trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel observes that the Complainant has provided evidence of numerous trademark registrations comprising the word “Barbie”, which is obviously identical with the first and relevant part of the disputed domain name <barbiedressupgames.net>. In comparison with the Complainant’s trademarks, the disputed domain name bears the additional terms “dress up” and “games”. Regarding the disputed domain name, there is no doubt that the term “Barbie” is the dominant component of the disputed domain name.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, it may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).
Furthermore, it is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant’s trademark in a domain name does not dispel confusion.
Here, the Panel considers that the terms “dress-up” and “games” even add to the similarity of the domain name to the BARBIE trademark as they are in direct connection with the Complainant’s activity and products for which its trademarks have been registered.
In fact, the Complainant proved that it offers itself board games and video games under its BARBIE mark, including on its own website at “www.barbie.com”, and some of these games include “dressing up” activities. In Mattel, Inc. v. Hoang Tuyen, NAF Claim No. 1297994, the panel, held that “a domain name that adds a descriptive term with an obvious relationship to complainant’s business creates a confusing similarity between the domain and complainant’s mark” and considered that combining the generic word “games” with the registered mark BARBIE does not avoid confusing similarity. In the same way, in Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219 (<pokemon-games.com>), the panel considered that the respondent’s addition of “-games” did nothing to reduce its confusing similarity with the POKEMON marks.
In view of the above, the Panel considers that the Complainant proved that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In line with prior UDRP WIPO panel decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to have the burden of evidence shift to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any permission or authorization to use the word “Barbie” as part of a domain name or in any other way.
In this case, the Respondent did not answer to the Complaint, and as such failed to demonstrate any of the above circumstances.
In view of the above, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent have engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s web site or location.
The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.
The Panel finds that, as already established by prior UDRP panels, the BARBIE trademark has been famous for many years and all around the world and is to be regarded as a well-known trademark (see, e.g., Mattel Inc., Mattel España S.A., v. Glaciar State S.L., WIPO Case No. DES2009-0040; Mattel Inc. v. Andrew Cuthbert, NAF Claim No. 1214706). Thus, it appears clearly to the Panel that the Respondent knew or should have known the existence of the BARBIE trademark at the time of registration of the disputed domain name.
The Panel concurs with prior UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself (see The Gap Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Therefore, the Panel considers that the Respondent did not register the disputed domain name in good faith.
In addition to this, the Complainant proved that the website to which the disputed domain name resolves offers official BARBIE branded games without authorization from the Complainant to display such games, unauthorized BARBIE branded games and games unrelated to the BARBIE trademark. It also appears that the Respondent’s website contains advertisements and contains a link to a website unrelated to the Complainant where users are encouraged to purchase online games. Such website may have arranged to pay a commission to the Respondent for each visitor so referred. The referring website may thereby generate a revenue stream for the Respondent.
It is commonly held by UDRP panels that such pay-per-click business shall not necessarily be considered as illegitimate. However, this practice appears to be illegitimate when another's trademark is featured in the domain name without authorization as a mean of attracting visitors (see Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266).
In this case, the Panel found that, as already held by another UDRP panel in a similar case involving the BARBIE mark, Internet users searching for the Complainant online may find the Respondent’s website instead and become confused as to the Complainant’s affiliation with the website and feature content (Mattel Inc. v. Bucsek Bernadett, NAF Claim No. 1390980).
As a consequence, the Panel finds that there is no reason for the Respondent to use the BARBIE mark except to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, or affiliation of the Respondent’s website, which characterizes a use in bad faith.
Furthermore, the Complainant points out that the Respondent has engaged in similar practices in the past as it appears that prior UDRP panels have already ordered restitution of domain names in cases where the Respondent was involved as respondent (see Société des Produits Nestlé S.A. v. Above.com Domain Privacy, Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-1882; see also Valero Energy Corporation, Valero Marketing and Supply Company v. Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2011-0920).
Therefore, based upon the statements and documents submitted by the Complainant and in accordance with the Policy, the Panel considers that the disputed domain name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
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 name <barbiedressupgames.net> be transferred to the Complainant.
Dated: February 23, 2012