Introduced by Mattel in 1959, Barbie quickly became a cultural icon, symbolizing fashion, beauty, and limitless possibilities for young girls.
As a brand mark, Barbie revolutionized the toy industry, embodying the evolving ideals of femininity and empowerment, while also facing criticism for promoting unrealistic beauty standards. Barbie remains a powerful and enduring symbol and carries the famous, internationally recognized BARBIE mark.
It comes as no surprise that the registrant of the domain name Barbie.ai was hit with a UDRP all while it was listed for sale with a “make offer” lander at Dan.
The Complainant, Mattel, Inc., sent its team of lawyers to claim rights to the mark and the domain.
The Respondent did not file a response and the sole Forum (NAF) panelist stated the obvious:
“The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, March 10, 2020, Respondent had actual knowledge of Complainant’s BARBIE mark. Complainant has used the BARBIE mark for 60 years and has a considerable global reputation in the mark. Furthermore, Respondent has not provided an explanation why it registered a domain name identical to the BARBIE mark (and offered it for sale to the public) other than to take advantage of Complainant’s reputation in the BARBIE mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith.”
The Respondent did not respond. Final decision: Grant the transfer of the domain name Barbie.ai to the Complainant.
Mattel, Inc. v. Michael Fournier
Claim Number: FA2407002108997
PARTIES
Complainant is Mattel, Inc. (“Complainant”), represented by Brian D. Wassom of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Michael Fournier (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is barbie.ai (“Domain Name”), registered with NameCheap, Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 31, 2024; Forum received payment on July 31, 2024.
On July 31, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the barbie.ai domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barbie.ai. Also on July 31, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant is an American multinational company that is a world leader in the design and manufacture of toys, games, playthings and family products. One of its most popular and iconic products is a range of children’s dolls which since 1959 it has sold by reference to the character (and under the trademark) BARBIE. Complainant has rights in the BARBIE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 689,055, registered on December 1, 1959). Respondent’s barbie.ai domain name is identical to Complainant’s BARBIE mark as it incorporates Complainant’s mark in its entirety and merely adds the “.ai” generic top-level-domain (“gTLD”).
Respondent lacks rights or legitimate interests in the barbie.ai domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the BARBIE mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Respondent is offering the Domain Name for sale to the general public from the Domain Name’s resolving website (“Respondent’s Website”).
Respondent registered and uses the barbie.ai domain name in bad faith. Respondent registered the Domain Name with awareness of Complainant’s well-known BARBIE mark and immediately redirected the Domain Name to a website offering itself for sale. Respondent disrupts Complainant’s business as Respondent registered the Domain Name with the intent to sell the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant holds trademark rights for the BARBIE mark. The Domain Name is identical to Complainant’s BARBIE mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant asserts rights in the BARBIE mark through its registration of the mark with the USPTO (e.g., Reg. No. 689,055, registered on December 1, 1959). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the barbie.ai domain name identical to Complainant’s BARBIE mark as it wholly incorporates the mark along with the “.ai” gTLD. Under Policy ¶ 4(a)(i), the addition of a TLD is irrelevant in determining whether a domain name and mark are identical. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BARBIE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the statefarmforum.com domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Michael Fournier” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a webpage maintained by a third party which advertises that the Domain Name is for sale. Absent any other explanation, this indicates that the Domain Name was registered for the purpose of selling it to a third party for profit. Absent any explanation by Respondent for its conduct and noting that the Domain Name does not correspond to a generic term, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Forum Jan. 17, 2014) (“Respondent has offered the aoljobsweek.com domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, March 10, 2020, Respondent had actual knowledge of Complainant’s BARBIE mark. Complainant has used the BARBIE mark for 60 years and has a considerable global reputation in the mark. Furthermore, Respondent has not provided an explanation why it registered a domain name identical to the BARBIE mark (and offered it for sale to the public) other than to take advantage of Complainant’s reputation in the BARBIE mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). In the present case, given the nature of the Domain Name which is identical to an iconic, well-known mark, the manner in which it has been used and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i). The Panel notes that the uncontested evidence in the Complaint is that the Domain Name, upon registration, was immediately offered for sale; it has never been used for any purpose other being offered for sale.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
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 barbie.ai domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 22, 2024
