Should Websites Charge A Fee To Process Copyright Takedowns?

(envelope-sender <various@jacquesweb.com>)
for <my email address>; 6 jun 2003 19:14:32 -0000
date: Sat, 07 jun 2003 09:35:34 gmt
from: Gomes fasikop <various@jacquesweb.com>
to: My email address
message-id: <1043514532.31460048080344@jacquesweb.com>
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NATIONAL ARBITRATION FORUM

DECISION

Mattel, Inc. v. Aaron Jacques
Claim Number: FA0706001024381

PARTIES
Complainant is Mattel, Inc. (?Complainant?), represented by Megan L. Martin, of Dunnegan LLC, 350 Fifth Avenue, New York, NY 10118. Respondent is Aaron Jacques (?Respondent?), 1477 Glengarry Ave, London, ON N5X 1R2, Canada.


REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lennybarbie.com>, registered with Go Daddy Software, Inc.

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.

David A. Einhorn appointed as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2007.

On June 29, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lennybarbie.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.

On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the ?Commencement Notification?), setting a deadline of July 23, 2007 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 [email protected] by e-mail.

A timely Response was received and determined to be complete on July 23, 2007.

On July 30, 2007, pursuant to Complainant?s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES? CONTENTIONS
A. Complainant
Complainant makes the following assertions:
1. Complainant, Mattel, Inc., owns federal trademark registrations for BARBIE. Complainant further contends that Respondent?s <lennybarbie.com> domain name is confusingly similar to Complainant?s Mark.

2. Complainant contends that Respondent does not have any rights or legitimate interests in the <lennybarbie.com> domain name.

3. Complainant contends that Respondent registered and used the <lennybarbie.com> domain name in bad faith.

B. Respondent
Respondent contends that Complainant?s United States trademark registrations are irrelevant because Respondent is a Canadian resident. Respondent further argues that the BARBIE mark is generic.

FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.?

Respondent asserts, in additional correspondence to the National Arbitration Forum, that Complainant may not rely on its United States trademark registrations because Respondent is not a resident of the United States.

Identical and/or Confusingly Similar
Complainant alleges rights in the BARBIE mark through its registration of the mark with the USPTO. 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). See Torey Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (?The Panel finds that Complainant has established rights in the Trademark, by reason of its U.S. trademark registrations, which are valid and subsisting. The U.S. Trademark Act is clear that the Certificate of Registration, as here, is prima facie evidence of the validity of the registered mark and the registrant?s exclusive right to use the mark in commerce on or in connection with the goods specified in the registration.?)

The disputed domain name fully incorporates the BARBIE mark and adds the term ?lenny? before it. Whether the resulting domain is confusingly similar to the BARBIE mark is a close call because the added word ?lenny? does not have any apparent descriptive meaning in this context. Nevertheless, Respondent does not argue that this domain is not confusingly similar to the BARBIE mark and merely (and unconvincingly) argues that the BARBIE mark is generic.

As Respondent has not provided any substantive arguments pertaining to the rights or legitimate interests prong of this analysis, Respondent has essentially defaulted on this issue. In view of this ?default,? the Panel accepts all reasonable allegations and inferences set forth in the Complaint regarding the confusing similarity issue as true.

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests
Complainant asserts that Respondent is not commonly known by the <lennybarbie.com> domain name. The WHOIS registration information lists the registrant as ?Aaron Jacques,? and Complainant asserts that Respondent has not acquired any trademark or service mark rights to the domain name in question. In light of the lack of countervailing evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

Complainant asserts, and Respondent does not dispute, that Respondent?s <lennybarbie.com> domain name resolves to an adult-oriented website called ?Super Site Pass,? also accessible via the <supersitepass.com> domain name. The Panel finds that Respondent?s use of Complainant?s BARBIE mark to divert Internet users to an adult-oriented website does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website ?tarnishes Complainant?s mark and does not evidence noncommercial or fair use of the domain name by a respondent?); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (?Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.?).

The Panel therefore finds that ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith
Respondent is using a domain name similar to Complainant?s BARBIE mark to direct Internet users to its adult-oriented web site and is therefore profiting from the goodwill associated with the BARBIE mark. Such use demonstrates registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent?s use of complainant?s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic web sites evidenced bad faith use and registration of the domain name).

The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <lennybarbie.com> domain name be TRANSFERRED from Respondent to Complainant.

The (National Arbitration Forum) Panel finds that Respondent?s (Aaron Jacque's) use of Complainant?s BARBIE mark to divert Internet users to an adult-oriented website does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).