WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mattel, Inc. v. Magic 8 ball factory
Case No. D2013-0058
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 Magic 8 ball factory of Shifang town, Shifang, China.
2. The Domain Name and Registrar
The disputed domain name <magic8balls.biz> (“The Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 10, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the The Domain Name. On February 11, 2013, the Registrar transmitted by email to the Center its 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 January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2013.
The Center appointed Isabel Davies as the sole panelist in this matter on February 11, 2013. 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
Complainant is a designer, manufacturer and distributor of toys, games apparel and equipment for children. Complainant states that it is the biggest toymaker in the world.
Complainant states that one of the toys in its range is its MAGIC 8 BALL toy which was introduced in the United States of America in 1950 and is now sold all over the world. The products are sold over the Internet as well as in retail stores. Sales under the MAGIC 8 BALL mark have been in the tens of millions of dollars over the past decade and the goods sold under that mark are associated exclusively with Complainant.
The trade mark MAGIC 8 BALL (The Trade Mark) was registered in the United States since at least 1963 and in many other countries including China where the registration dates from 2005.
Respondent registered the domain name <magic8balls.biz> (The Domain Name) on December 12, 2010.
5. Parties’ Contentions
A. Complainant
Complainant contends that The Domain Name is confusingly similar to the Trade Mark as the addition of a plural ending is merely a slight variation or misspelling of The Trade Mark.
Complainant contends that Respondent has no rights or legitimate interest to The Domain Name based on the Complainant’s long and continuous prior use and that none of the situations described in Paragraph 4(c) of the Policy can be established by Respondent.
Complainant contends that Respondent cannot have been unaware of The Trade Mark and registered The Domain Name years after Complainant registered its trademarks including registration in China and cannot deny that it did not have Complainant’s permission or authorization.
Complainant states that Respondent is not making legitimate noncommercial or fair use of The Domain Name without intent for commercial gain as the website is advertising counterfeit MAGIC 8 BALL toys and Respondent is an individual not known as MAGIC 8 BALL.
Complainant contends that Respondent registered The Domain Name in bad faith as Respondent has no reason to use The Trade Mark in The Domain Name other than to attract users to its site for commercial gain.
Complainant avers that Respondent had full knowledge of Complainant’s Rights in The Trade Mark and constructive notice of the Complainant’s trade marks by virtue of Section 22 of The Lanham Act, 15 U.S.C 1072 in the United States and that the Respondent’s website is in English and targets the US public with prices in dollars.
Complainant states that The Domain Name is used in bad faith because the website offers counterfeit goods for sale thereby competing with Complainant and disrupting Complainant’s business in violation of paragraph 4(b)(iii) of the Policy. In addition Respondent’s activities constitute bad faith under paragraph 4(b)(iv) of the Policy as it is using The Domain Name intentionally to attract for commercial gain Internet users to Respondent’s website where counterfeit goods are offered, creating a likelihood of confusion with The Trade Mark resulting in Trade Mark infringement and dilution. This will irreparably damage the Trade Mark and the assets of Complainant.
In addition Complainant contends that Respondent has registered The Domain Name with the express purpose of not permitting Complainant to register The Domain Name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) Respondent’s Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the Domain Name;
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
Complainant must establish these elements even if Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer The Domain Name.
A. Identical or Confusingly Similar
Complainant contends that The Domain Name is confusingly similar to the Trade Mark as the addition of a plural ending is merely a slight variation or misspelling of The Trade Mark.
The Panel has considered the fact that The Domain Name <magic8balls.biz> only differs from The Trade Mark in that it contains the letter “s,” which serves as a plural version of The Trade Mark..
The Panel finds that the addition of the letter “s” letter constitutes only a minor variation between The Domain Name and Complainant’s registered mark. The Panel recognizes this conduct as “typosquatting,” a practice which involves the use of a domain name of virtually identical and/or confusingly similar marks to a complainant’s trade mark (See Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694).
The Panel holds that the similarity from a visual, oral and conceptual perspective makes The Domain Name confusingly similar to the Complainant’s mark. (See EasyGroup IP Licensing Limited v. Philip Thornton, WIPO Case No. D2004-0826).
In situations where the domain name is a slight alphabetical variation from a famous mark, it is easy for an Internet user to make a typing error, (See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314).
As Complainant states in other WIPO proceedings, panelists have found “[d]isputed domain names with misspelled variations of trademarks … to be ‘confusingly similar.’” Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791; ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843 (finding clear case of typo-squatting: <extendedstaysamerica.com> confusingly similar to EXTENDED STAY AMERICA mark); Apple Inc. v. Private Whois Service, WIPO Case No. D2011-0929 (<ipods.com> confusing similar to IPOD).
For the reasons stated above, the Panel holds that The Domain Name is confusingly similar to Complainant’s trade mark and Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel accepts Complainant’s contention that Respondent has no rights or legitimate interest to The Domain Name based on the Complainant’s long and continuous prior use and accepts that Respondent cannot have been unaware of The Trade Mark and registered The Domain Name years after Complainant registered its trademarks including registration in China and cannot deny that it did not have Complainant’s permission or authorization.
The Panel accepts the Complainant’s statement that Respondent is not making legitimate noncommercial or fair use of The Domain Name without intent for commercial gain as the website is advertising counterfeit MAGIC 8 BALL toys and Respondent is an individual not commonly known as MAGIC 8 BALL.
Prior panelists in UDRP proceedings have found that there can be no legitimate interest in the sale of counterfeit goods. See Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572 (consolidated with ten other proceedings).
The Panel therefore finds that Respondent does not have any rights or legitimate interest in The Domain Name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered The Domain Name in bad faith as Respondent has no reason to use The Trade Mark in The Domain Name other than to attract Internet users to its site for commercial gain.
The Panel accepts Complainant’s arguments that Panelists in other decisions have found bad faith registration where the respondent sells counterfeit merchandise.
In Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831, the panelist determined that the respondent registered and used the domain name <balenciaga-bags.com> in bad faith where the respondent sold counterfeit handbags:
“The Panel accepts that the Respondent must have had the Complainant’s notorious trademark in mind when he registered the Domain Name, as evidenced in particular by the use to which the Domain Name has been put. In view of the Panel’s finding that the Respondent has no rights or legitimate interests in the Domain Name, it follows that the Domain Name was registered in bad faith.
In the absence of any legitimate interests, the Respondent’s use of the website for the purpose of offering for sale what purport to be the Complainant’s products is such that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site and of products on the web site.”
As Complainant states similar findings have been made in other cases involving the sale of counterfeit goods:
“Since Respondent is selling presumably counterfeit goods under the LONGCHAMP mark, it necessarily must have known Complainant and its products at the time of the registration of the disputed domain names. Therefore the Panel concludes that the registration of the disputed domain names was made in bad faith.
Jean Cassegrain S.A.S. v. Abel Magee, WIPO Case No. D2011-1572 (baglongchamp.com, baglongchamp.info, baglongchamp.net, baglongchamp.org, bagslongchamp.info, bagslongchamps.com, bagslongchamps.net, bagslongchamps.org, handbagslongchamp.net, longchampsac.info, longchampsac.net, and saclongchamp.co)
In this Panel’s view, the exploitation of consumer confusion for the purpose of selling counterfeit goods, with evident knowledge of the Complainant’s rights in its trademarks, is one of the strongest examples of registration and use in bad faith.
Goyard St-Honoré v. Lin Honghai, WIPO Case No. D2012-1165 (goardofficials.com, goyardbagonline.com, goyardbagonlines.com, goyardofficial.com and goyardtotebag.com)
This is a blatant case of cyber-squatting – attempting to sell counterfeit goods utilizing the Complainant’s mark. The fame of the Complainant’s trademark, the extent of its worldwide coverage and the general knowledge of the quality of its products make it an irresistible inference that the disputed domain name was registered in bad faith.
Chrome Hearts LLC v. James Hart, WIPO Case No. DCC2011-0005 (chromehearts.cc).
Respondent’s sale of counterfeit goods on a website accessible through the Domain Name is paradigmatic bad faith. Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019 (January 27, 2005). This conduct supports the inference that Respondent registered this Domain Name with the bad faith intent to deceive consumers with its counterfeit products, and that it intentionally has used the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products. Policy 4(b)(iv). See also Schouten Industries B.V. v. Canadian Soylife Health Co. Ltd., NAF Claim No. FA149188 (July 19, 2003) (finding bad faith in trademark infringement).
Courts, too, have severely punished counterfeiters who ply their goods on the Internet using deceptive domain names. The sale of such counterfeits via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable. See Louis Vuitton Malletier v. Veit, 211 F.Supp.2d 567 (E.D.Pa. 2002).
Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 (bloussantadvanced.com).”
The Panel accepts that Respondent's registration of The Domain Name was in bad faith.
The Panel accepts that the Respondent’s website is in English and targets the US public with prices in dollars and that The Domain Name is used in bad faith because the website offers counterfeit goods for sale thereby competing with Complainant and disrupting Complainant’s business.
The Panel also accepts that Respondent’s activities constitute bad faith under paragraph 4(b)(iv) of the Policy as it is using The Domain Name intentionally to compete with Complainant and to attract for commercial gain Internet users to Respondent’s website where counterfeit goods are offered, by creating a likelihood of confusion with The Trade Mark. The Panel agrees that this will damage the Trade Mark and the assets of Complainant and that the use of The Domain Name is in bad faith.
“The use of the disputed domain name for an online pharmacy site on which the Respondent sells a large variety of drugs including counterfeit products and placebo products clearly indicates that Respondent's primary intent was to redirect Internet users to his website and thus capitalizing on the goodwill of Complainant's trademark.
This qualifies as bad faith under paragraph 4(b)(iv) in that Respondent's use of the disputed domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419 <acompliabuyonline.com>.”
The Panel finds that The Domain Name has been registered and used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that The Domain Name <magic8balls.biz> be transferred to Complainant.
Isabel Davies
Sole Panelist
Date: February 21, 2013