The Complainant is Mattel, Inc. of El Segundo, California, United States of America (USA), represented by Sughrue Mion, PLLC, USA.
The Respondent is PrivacyP of Nobby Beach, Queensland, Australia, / Stuparu Darius of Satu Mare, Romania. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2012. On June 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 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 July 2, 2012.
The Center verified that the Complaint together with the amendment to 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 July 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2012. The Respondent did not file a formal Response, nevertheless before the commencement of the proceedings, the Center received an informal communication from the Respondent on June 27, 2012.
The Center appointed Richard Tan as the sole panelist in this matter on July 30, 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 designer, manufacturer and distributor of toys, games apparel and equipment for babies and children. It is the largest toy manufacturer in the world. One of the Complainant’s most successful products is its fashion doll, accessories and related services under the BARBIE brand.
The Complainant owns numerous trade marks and service mark registrations in respect of the BARBIE mark alone and in combination with other terms and designs around the world, including in the United States of America, the European Union, Asia, Australia and elsewhere.
The Complainant also owns a number of different domain names incorporating the BARBIE name which it uses to promote its BARBIE branded fashion dolls and related goods and services, including , , , , and .
The disputed domain names were registered in 2008 and 2009. The disputed domain names resolve to websites which provide on-line games and which carry advertisements from which the Respondent derives revenue, and which additionally carry advertisements inviting others to advertise on the websites through an “Advertise here” link. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the world’s largest toy manufacturer. One of the Complainant’s most successful products is its fashion doll, accessories and related services under the BARBIE brand.
It contends that the first BARBIE doll was introduced in March 1959 at the American International Toy Fair in New York. Since its introduction in 1959, its BARBIE branded products have grown tremendously and today, BARBIE fashion dolls are sold throughout the world. Sales of BARBIE branded goods and services in 2011 amounted to hundreds of millions of dollars.
The Complainant contends that it owns numerous trade marks and service mark registrations in respect of the BARBIE mark, as noted above, alone and in combination with other terms and designs around the world, including in the United States of America, the European Union, Asia, Australia and elsewhere. It also owns a number of different domain names incorporating the BARBIE name which it uses to promote its BARBIE branded fashion dolls and related goods and services, including , , , , and .
It sells its products and services through various channels of trade including on the Internet, mail catalogs and in brick and mortar stores. In addition to selling its goods at its own website, the Complainant sells its BARBIE branded fashion dolls at the “” website. Its BARBIE branded products can also be purchased at brick and mortar stores and online stores maintained by Wal-Mart, K-Mart and Target, among others.
The Complainant contends that by virtue of its long and extensive use, the BARBIE mark has become famous and is one of the best known trademarks in the world today, and is well recognized as a symbol of the highest quality in fashion dolls and related goods and services. It also contends that its BARBIE mark has been held to be famous in prior UDRP proceedings such as Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264 and Mattel Inc., Mattel España S.A., v. G!aciar State SL., WIPO Case No. DES2009-0040.
The Complainant contends that all of the Respondent‘s disputed domain names are confusingly similar to the Complainant’s trademark BARBIE and that the “barbie” part of the disputed domain names is identical to the Complainant’s famous BARBIE mark.
It argues that with the exception of the disputed domain name , the Respondent has merely added generic terms to the BARBIE mark to create the disputed domain names. It argues that these generic terms merely add to the similarity of the disputed domain names to the BARBIE mark and relies on previous UDRP decisions where panels have found confusing similarity in proceedings involving similar domain names: Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264 (held to be confusingly similar to BARBIE); Mattel, Inc. v. Maria Morariu,WIPO Case No. D2011-2229 (and held to be confusingly similar to BARBIE); MatteI, Inc. v. Barbwired Promotions, NAF Claim No. 0948479 (confusingly similar to BARBIE); Mattel, Inc. v. Dan Rukes, NAF Claim No. 0099678 (, , , and among others found confusingly similar to BARBIE); Mattel, Inc. v. Hoang Tuyen, NAF Claim No. 1297994 (found confusingly similar to BARBIE).
The Complainant points out that here, thirteen of the seventeen disputed domain names have the generic word “games” combined with the BARBIE mark and in some cases with other generic wording: ,, , , , , ,,, ,, , and . In these disputed domain names,the generic word “games” has been used in conjunction with the BARBIE mark. The Complainant also contends that it also offers both board games and video games under its BARBIE mark.
As to the other generic terms used in the disputed domain names, the word “dress-up” is merely a generic word for an activity in which purchasers of the Complainant’s BARBIE products engage in dressing up their BARBIE dolls. The Complainant asserts that “dressing up“ a BARBIE doll is a basic doll playing activity. The word “fashion” is also merely a generic word that describes the Complainant’s BARBIE branded dolls, which are fashion dolls. In fact, at the Complainant’s “www.”website, there is a section of the site devoted to “fashion“. The expression “4u” in the and disputeddomain names generically advertises that the BARBIE games are for the user. The word “free” advertises that the games are free of charge. The word “fairy” refers to a type of BARBIE doll and games.
The disputed domain names and include the generic terms “fashion”, “girls” and “dolls”. The word “girls” refers to the fact that Complainant offers “girl” dolls under its BARBIE mark while the word DOLLS refers to Complainant’s original and main product offered under its BARBIE mark. Moreover, the Complainant owns the domain names and ,among others.
The disputed domain name is clearly confusingly similar to the BARBIE mark. The term “doll maker” refers to the Complainant which makes the BARBIE dolls. The Complainant asserts that these are generic terms when used in connection with the BARBIE mark.
The Complainant notes that with regard to the disputed domain name , the disputed domain nameincludes not only the famous BARBIE mark but the BRATZ mark, which is owned by MGA Entertainment and the generic words DRESS UP. The Complainant contends that this disputed domain name is however, in its entirety, to be regarded as confusingly similar to the BARBIE mark. Such generic terms (and Complainant’s competitor’s BRATZ mark) when added to the famous BARBIE mark do not distinguish the disputed domain names from the Complainant’s mark but their addition actually exacerbates confusion.
The Complainant accordingly contends that the disputed domain names are confusingly similar to the BARBIE mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names based on the Complainant’s continuous and long prior use of its BARBIE mark.
At the time the Respondent selected BARBIE as part of its disputed domain names, it was on notice of Complainant’s worldwide trade mark rights, including rights that extend to Romania, where the Respondent appeared to be located.
The Complainant argues that the Respondent cannot conceivably claim to have been unaware of the famous BARBIE trade mark, 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 the disputed domain names or in any other way.
The Complainant contends that the Respondent is obviously not making a legitimate non-commercial or fair use of the disputed domain names “without intent for commercial gain”. The websites maintained at all of the disputed domain names provide on-line games and the Complainant asserts that this is evidence of the Respondent’s lack of legitimate rights. The Respondent did not have permission to use the BARBIE mark in any domain name where competing online games are offered. The Respondent was clearly using the BARBIE mark in an unauthorized manner in its disputed domain names and in its corresponding websites. None of the games offered at any of these sites are legitimate BARBIE branded games. These are all unauthorized uses of BARBIE in connection with online games.
All of the websites maintained at the disputed domain names have advertisements. On information and belief, the Complainant contends that the Respondent receives revenue from advertisements placed on its websites. There are AdChoices advertisements on all of the sites except that for , the site to which resolves has rotating advertisements for games hosted on other sites, including “”and “”. The Complainant asserts that the use of the websites displaying advertisements further evidences the Respondent’s lack of rights and legitimate interests in the disputed domain names.
In addition to these advertisements, all of the websites to which the disputed domain names resolve (including ) have advertisements for other games and invite others to advertise at the sites with a “Advertise here” red balloon. In fact, Respondent advises that “the only possibility to advertise on [the relevant site] is via Google Adsense!”. The Complainant points out that Google Adsense is a program that website owners use to make money from placing advertisements on their webpages.
The Complainant further contends that the Respondent is not commonly known as BARBIE.
The Complainant further contends that in the Respondent’s communication with the Center dated June 27, 2012, the Respondent stated that it registered the disputed domain names because they correspond to popular searches on major search engines. The Complainant points out that the Respondent in fact admits that it is using the famous BARBIE mark to drive Internet users to its sites.
The Complainant therefore contends that the Respondent has no rights or legitimate interests in the disputed domain names, especially given the fame of the BARBIE mark.
The Complainant therefore contends that the Respondent has registered and used the disputed domain names in bad faith.
The Complainant asserts that the Respondent chose the disputed domain names with full knowledge of the Complainant’s rights. At the time the Respondent registered the disputed domain names in 2008 and 2009, the Respondent was on constructive notice of the Complainant’s famous BARBIE mark by virtue of its worldwide registrations. It is 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 and exclusive use thereof. The Complainant points out that in fact, the Respondent admitted in his email communication to the Center dated June 27, 2012 that he knew of the famous BARBIE mark when he registered all seventeen disputed domain names.
The Complainant contends that there is no justification for the Respondent’s registration of the disputed domain names which merely include various generic terms (or a competitor’s registered mark) added to Complainant’s famous BARBIE mark. The Complainant asserts that the Respondent’s registration of the disputed domain names must have been intended to confuse the relevant purchasing public into believing that the Complainant maintains, or has approved, endorsed or is the sponsor of the disputed domain names, or that the disputed domain names or the Respondent were otherwise associated with the Complainant.
Further the Complainant contends that the Respondent’s use of the disputed domain names was in bad faith as the Respondent was using the disputed domain names to resolve to websites where unauthorized BARBIE branded games and games unrelated to the Complainant were offered. Such type of activity has been found to constitute bad faith use and registration: see for example Mattel, Inc. v. Maria Morariu,WIPO Case No. D2011-2229.
The Complainant further contends that the Respondent registered the disputed domain names with the express purpose of not permitting Complainant to register and use the disputed domain names.
The Complainant further contends that that the Respondent’s selection of the disputed domain names could not have been for anything other than bad faith; there was no reason for Respondent to use BARBIE except to generate income from the links and advertisements displayed there. The Respondent purposely registered the disputed domain names for commercial gain.
Further, the Respondent’s use of the disputed domain names was also blatantly opportunistic. Such use might arise 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”: Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
The Complainant further contends that the Respondent’s bad faith registration and use is further evidenced by the fact that the disputed domain names were blatant infringements and diluted the strength of the Complainant’s trade mark rights. It is inevitable that the public will assume, and has assumed, that these disputed domain names belong to the Complainant or that the holder and user of the disputed domain names has been authorized or endorsed by the Complainant. In addition to traditional confusion arising from infringement, if the Respondent is permitted to continue to use the disputed domain names, the public will continue to be confused into believing or assuming that the Complainant does not object to use of its trademark in a domain name which combines its famous BARBIE mark with generic wording (or a competitor’s mark) by an unauthorized entity who is blatantly trading on the BARBIE mark or a domain name that is merely a result of cybersquatting. The Complainant contends that confusion in both senses constitutes trademark infringement and dilution, irreparably damaging a famous mark and an invaluable asset of the Complainant. B. Respondent
The Respondent submitted an informal response by email dated June 27, 2012 addressed to the Center. In its email communication, the Respondent stated that he was the owner of the seventeen disputed domain names. He said that he was a search optimization expert and all the disputed domain names were registered “because on every major search engine (like Google, Yahoo, Bing, Altavista, MSN etc) there are a lot of popular seaches for therms [sic] like “barbie games”, “barbie dress up”, “barbie dress up games, “barbie make-over” etc. For this [sic] searches, Google and the other search engines, are returning results from many websites different from mattel’s website. “The Respondent asserted that there were various domain names not owned by the Complainant that were “live and running” and he did not understand why the Complainant should be entitled to object to such domain names that contained the BARBIE mark merely because they owned certain trade marks for the mark BARBIE for “a plastic doll”. He claimed to be merely offering free online games involving girls’ games. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain names:
(i) that the disputed domain name is identical or confusingly similar to a trade mark 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
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the BARBIE mark. The BARBIE mark has been registered in many countries around the world as noted above, including in Europe (where the Respondent appears to be based), the United States of America, Australia and other countries.
The evidence adduced by the Complainant demonstrates that the mark has been extensively used by the Complainant for its fashion doll, accessories and related services under the BARBIE brand or mark. This Panel is satisfied on the evidence that the Complainant has acquired rights in those marks, and that the BARBIE mark has acquired the status of a well-known and famous mark.
The Panel further accepts that the disputed domain names are confusingly similar to the Complainant’s BARBIE mark.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain names themselves to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain names, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. Each of the disputed domain names reproduces the BARBIE mark in its entirety.
With the exception of , the Respondent has merely added various common and generic terms to the BARBIE mark to create its disputed domain names. As found by previous UDRP panels, the mere addition of common or generic words will not be sufficient under the circumstances to avoid a finding of confusing similarity especially where a well known mark is involved and that mark, like the BARBIE mark in this case, is instantly recognizable as the dominant or principal component in the disputed domain names. See the decisions by previous UDRP panels which have found that domain names that combine generic terms with trademarks are confusingly similar to the marks: Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426 and the decisions cited by the Complainant like Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264 and Mattel, Inc. v. Maria Morariu,WIPO Case No. D2011-2229.
The Panel accepts the above contentions of the Complainant that the disputed domain names have generic or descriptive terms like the word “games”, “fashion”, “4u”, “girls”, “dressup”, “free”, “dollmaker”, and “fairy”, which when combined with the BARBIE mark do not distinguish the Respondent’s websites from the Complainant or its products, but indeed only, as the Complainant asserts, adds to the likelihood of confusion.
With regard to the disputed domain name , that disputed domain nameincludes the famous BARBIE mark and the generic words “dressup”. Although this disputed domain name also includes the word BRATZ, looked at in its entirety, this disputed domain name is, in this Panel’s opinion, nonetheless confusingly similar to the BARBIE mark. The word “bratz” does not distinguish the disputed domain name from the Complainant’s mark but its addition is capable of, as the Complainant contends, actually increasing confusion. In any case, its addition is insufficient to avoid a finding of confusing similarity particularly as the Complainant’s BARBIE mark is instantly recognizable as one of the dominant or principal components of the disputed domain name.
In this Panel’s view, the test of confusingly similarity for each of the disputed domain names is clearly satisfied. This Panel accordingly finds that the disputed domain names are confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant contends that the Respondent registered the disputed domain names long after the Complainant established its rights in the well-known BARBIE mark, which the Respondent would clearly have been aware of at the time of the registration of the disputed domain names in 2008 and 2009,
that the Respondent is not commonly known by the disputed domain names, that the Respondent has never been known by the BARBIE name or mark, that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.
The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, and the disputed domain names have been used to mislead and attract customers to its websites for its own commercial gain by the use of advertisements from which the Respondent receives revenue or intends to collect advertisement revenue. The Respondent is not associated or connected in any way with the Complainant. Such a use of or association with the Complainant’s well-known BARBIE mark for the Respondent’s websites to generate advertising revenue is contrary to a bona fide offering of goods or services or the Respondent having a legitimate interest in the disputed domain names.
The Panel accepts the Complainant’s contentions that based on the manner in which the Complainant asserts the Respondent used the BARBIE mark in the disputed domain names, without the consent of the Complainant, the Respondent was seeking to create the impression that the Respondent was associated with the Complainant and to mislead consumers into believing that the Respondent and its website was associated with or approved by the Complainant. In so doing the Respondent was clearly seeking to trade on the Complainant’s goodwill and reputation. Such use was not a legitimate noncommercial or fair use of the disputed domain names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain names have been registered and used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith.
The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The disputed domain names were registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain names, as asserted by the Complainant.
Indeed, the Respondent’s email communication of June 27, 2012, admits that the Respondent was aware of the Complainant’s mark and that the Respondent used search engines to find domain names bearing the BARBIE mark, with the apparent objective of registering a domain name bearing the BARBIE mark that was not already owned by the Complainant. In doing this, the Respondent must have been intended to take advantage of the reputation of the Complainant’s fame and reputation.
The Panel finds that the incorporation of the BARBIE mark in its entirety as part of the disputed domain names is an indication of bad faith under the circumstances. The Respondent’s choice of the disputed domain names which incorporated the Complainant’s mark leads to the conclusion that the Respondent was seeking to derive unfair monetary advantage from the Complainant’s reputation by its use of the websites in question from which it could obtain advertising revenue. The Respondent has not in its informal response denied that it was deriving advertising revenue from the websites with the disputed domain names.
The Respondent also added descriptive and non-distinctive elements to the disputed domain names that, as the Complainant asserted, merely served to add to the confusion and to attract Internet users looking for the Complainant’s original goods to the Respondent’s websites instead.
All of the above matters clearly demonstrate that the Respondent intentionally attempted 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, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyP, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
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 names , , , , , , , , , , , , , , and be transferred to the Complainant.
As requested by the Complainant, the Panel orders that the disputed domain name be cancelled.
Richard Tan
Sole Panelist
Dated: August 13, 2012
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