Barbie-girl.biz

The timeline behind barbie-girl.biz

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Mattel, Inc. v. Andrew Cuthbert Claim Number: FA0807001214706 PARTIES Complainant is Mattel, Inc. (“Complainant”), represented by William Dunnegan, of Dunnegan LLC, New York, USA. Respondent is Andrew Cuthbert (“Respondent”), United Kingdom. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <barbie-girl.biz>, registered with 1&1 Internet Ag. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Louis E. Condon as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2008. On July 11, 2008, 1&1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <barbie-girl.biz> domain name is registered with 1&1 Internet Ag and that Respondent is the current registrant of the name. 1&1 Internet Ag has verified that Respondent is bound by the 1&1 Internet Ag registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On July 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 6, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@barbie-girl.biz by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On August 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <barbie-girl.biz> domain name is confusingly similar to Complainant’s BARBIE mark. 2. Respondent does not have any rights or legitimate interests in the <barbie-girl.biz> domain name. 3. Respondent registered and used the <barbie-girl.biz> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Mattel Inc., markets dolls and related toys for kids under the BARBIE mark. Complainant cites an abundance of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BARBIE mark, the oldest of which is Registration Number 728,811 issued March 20, 1962 and renewed March 20, 1982. The most recent registration is Registration Number 3,287,023 issued August 28, 2007. Respondent, Andrew Cuthbert, registered the <barbie-girl.biz> domain name on April 21, 2005. The disputed domain name redirects Internet users to a website resolving from the <web-spaced.com> domain name that advertises a web design firm called “Web-Spaced.” DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant cites a plethora of USPTO trademark registrations for the BARBIE mark. Previous panels have found this evidence to be sufficient of Complainant’s rights in the BARBIE mark for the purposes of Policy ¶ 4(a)(i), and this Panel reaches the same conclusion. See Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”); see also Mattel, Inc. v. Jacques, FA 1024381 (Nat. Arb. Forum Aug. 29, 2007) (“The Panel finds that Complainant’s timely registration and extensive use of the BARBIE mark over many years establishes its rights in the mark pursuant to Policy ¶ 4(a)[i].”). Complainant alleges that the <barbie-girl.biz> domain name is confusingly similar to its BARBIE mark. The disputed domain name merely adds a hyphen and the generic term “girl,” as well as the generic top-level domain (“gTLD”) “.biz.” None of these changes sufficiently distinguish the disputed domain name; Complainant’s well-known BARBIE mark remains the dominant portion of the disputed domain name. Therefore, the Panel concludes that Respondent’s <barbie-girl.biz> domain name is confusingly similar to Complainant’s BARBIE mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges that Respondent does not have rights or legitimate interests in the <barbie-girl.biz> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Accordingly, the burden has shifted to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). Complainant claims that Respondent has not acquired any trademark or service mark rights in, and is not commonly known by the BARBIE mark or the <barbie-girl.biz> domain name. Based upon the evidence in the record, the Panel agrees. The WHOIS information identifies Respondent as “Andrew Cuthbert,” and there is no other evidence within the record indicating that Respondent may be commonly known by the disputed domain name. The Panel therefore concludes that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Respondent is using the <barbie-girl.biz> domain name to operate a web development company unrelated to Complainant’s business. Respondent presumably profits from this venture, so Respondent’s use is not considered a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). While Respondent’s business is unrelated to Complainant’s, Respondent is commercially gaining from the confusion created by using Complainant’s famous BARBIE mark in the disputed domain name. This fact means that Respondent’s use of the disputed domain name cannot constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <barbie-girl.biz> domain name pursuant to Policy ¶ 4(a)(ii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name). The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied. Registration and Use in Bad Faith As discussed above, Respondent is commercially benefiting from the goodwill associated with Complainant’s BARBIE mark. Respondent is doing this by capitalizing on a likelihood of confusion between Complainant’s business and the website resolving from the <barbie-girl.biz> domain name, especially with respect to any potential affiliation or endorsement. This evidences that Respondent’s registration and use of the <barbie-girl.biz> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). DECISION Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED. Accordingly, it is Ordered that the <barbie-girl.biz> domain name be TRANSFERRED from Respondent to Complainant. Louis E. Condon, Panelist Dated: August 26, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.