15th Feb 2005

National Arbitration Forum

DECISION

Mattel, Inc. v. Gopi Mattel

Claim Number: FA0411000372847

PARTIES

Complainant is Mattel, Inc. (“Complainant”), represented by David W. Quinto, of Quinn Emanuel Urquhart Oliver & Hedges, LLP, 865 South Figueroa Street, 10th Floor, Los Angeles, CA 90017.Respondent is Gopi Mattel (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mattel.org>, registered with Tucows, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, and have no known conflicts in serving as Panelists in this proceeding.

The Honorable Carolyn M. Johnson (Ret.), David Sorkin, and Hugues G. Richard, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2004.

On December 2, 2004, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <mattel.org> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 December 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 2004 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@mattel.org by e-mail.

Pursuant to Supplemental Rule 6, Respondent requested an extension of 17 days to respond to the Complaint based upon extenuating circumstances.Complainant consented to the extension request and the Forum granted the extension with a deadline of January 14, 2005 for which Respondent could file a Response.A timely Response was received and determined to be complete on January 13, 2005.

An untimely Additional Submission was received on January 27, 2005. While it is clear that the Panel, by virtue of its general powers under the ICANN Rules, has discretion to consider the Additional Submission despite this procedural shortcoming, after deliberation, the Panel decided not to consider it in the case at hand. Not only was the Additional Submission submitted nine days after the time delay provided under NAF Supplemental Rule 7, but there was a complete lack of reasons given by Complainant for this delay. Moreover, the representations made by Complainant in the Additional Submission either reasonably could have been included in the original Complaint, or fall outside the scope of the ICANN proceeding. The latter situation is the case, for example, where Complainant offers to forward all e-mail sent to Respondent’s current e-mail address to another e-mail of Respondent’s choosing.

Finally, the Panel expressed concern that allowing the Additional Submission would cause an undue delay of the entire proceeding for no apparent reason. Clearly, it would not have been fair for the Panel to allow the untimely Additional Submission without allowing Respondent to reply accordingly. Moreover, the time delay which would have been granted to Respondent for preparing the reply would only start running after a decision allowing the Additional Submission had been made, thus causing further delay. After deliberation, the Panel found such extensions would cause unduly delay to the entire proceeding and constitute abuse of the ICANN rules. For these reasons, the Panelrefused to consider the Additional Submission, as well as any reply Respondent may have prepared thereto.

On February 1, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Honorable Carolyn M. Johnson (Ret.), David Sorkin and Hugues G. Richard as Panelists. Hugues G. Richard was designated as the chair of the Panel.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant argues that Respondent has registered a domain name that is identical to Complainant’s MATTEL mark. To this effect, Complainant adds that the addition of the generic top-level domain “.org” is not sufficient to avoid a finding of confusing similarity, and has submitted authorities thereto as Annex 6 of its Complaint.

Complainant also argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not known by the domain name. Complainant adds that Mattel “is not a proper surname” and that Respondent likely changed his last name from “Muthyal” to “Mattel” for the purpose of asserting rights in the disputed domain name. Complainant also alleges that Respondent has not made any use of the domain name.

Complainant claims that the domain name was registered and is being used in bad faith because, in light of its famous mark, it is highly unlikely that Respondent was unaware of Complainant when he registered the domain name. It adds that bad faith may be found where Respondent “knew or should have known” of the registration of a trademark prior to registering the domain name. Complainant also alleges that Respondent has not made any use of or demonstrable preparations to use <mattel.org> in connection with a bona fide offering of goods and services, because the website located at the disputed domain has remained under construction at all times since its registration, and that such a prolonged non-use of a domain name has been found to constitute bad faith registration and use of a domain name.Complainant adds that by holding the disputed domain name, Respondent is preventing Complainant from a bona fide use of the domain name as a location for its non-for-profit activities, as the .org domain names are allegedly “reserved for non-for-profit organizations”. Further, Complainant contends that Respondent is not making constructive use of the domain name because it believes Respondent’s latest website at the domain name contains “click-through” advertising and, as such, constitutes use to intentionally attract, for commercial gain, Internet users to a website or other on-line location by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation, or endorsement of another website.

B. Respondent

Respondent argues that the fact that Complainant did not complain for almost four years after the registration of the disputed domain name by Respondent is evidence that Complainant did not believe its claims were truly warranted.

Respondent does not dispute the fact that Complainant’s trademark and the disputed domain name are identical.

However, Respondent claims to have rights and legitimate interests in the disputed domain name since “Mattel” is his surname and has been since he has become naturalized as a U.S. citizen in 1996 – five years prior to his registration of the disputed domain name. Moreover, Respondent argues he is commonly known by the domain name, as his Certificate of Naturalization, his driver’s license and other supporting documents allegedly indicate.

Respondent also argues that Complainant has not met its burden to prove bad faith registration and use of the disputed domain name by Respondent. He claims that there is no evidence to show that Respondent has registered the disputed domain for the purpose of selling, renting or transferring it to Complainant, to prevent Complainant from reflecting its trademark in a domain name, or to disrupt Complainant’s business or attract customers seeking to purchase its products.

Respondent is also of the opinion that the Panel should make a finding of Reverse Domain Name Hijacking in the present case. Respondent argues that Complainant should have known, from the private investigation it undertook on Respondent, that Respondent’s surname was Mattel long before he registered the disputed domain name. Moreover, since Respondent has been the registrant of the disputed domain name for almost 4 years, it claims that Complainant has had plenty of time to conduct its research on Respondent. As such, Respondent argues that Complainant knew, or at least should have known, that it could not prove the disputed domain name was registered in bad faith, and that the Panel should issue a ruling that Complainant has engaged in Reverse Domain Name Hijacking.

C. Additional Submissions

The Panel having declined to accept the untimely Additional Submission filed by Complainant, it is unnecessary to elaborate on its contents.

FINDINGS

The Panel finds that Complainant has established rights in the trademark “MATTEL” and that the disputed domain name is identical to this trademark. However, the relief sought by Complainant is denied because the Panel found that Respondent has rights and legitimate interests in the domain name. The Panel also found that the record did not warrant a finding of Reverse Domain Name Hijacking in the present case.

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.”

Pursuant to Paragraph 4(a) of the Policy, a 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;

(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.

Complainant’s rights in the MATTEL trademark

As it appears from Annex 2 of the Complaint, Complainant owns the registrations for the MATTEL trademark with the United States Patent and Trademark Office since at least 1963 (e.g., Reg. Nos. 2,835,826, 898,209, 2,279,928, 2,203,905, 635,129). As such, the Panel finds that Complainant has established rights in the MATTEL mark through these registrations.These registrations constitute prima facie evidence of the validity of Complainant’s alleged mark, Complainant’s ownership of its alleged mark, Complainant’s exclusive right to use the alleged mark on the goods or services for which it was registered, as well as Complainant’s priority of right to use of the mark dating back to at least as early as the filing date of the application for federal registration. See Tahoe Luxury Properties, Inc. v. Shari Chase and Chase Int., D2004-0151 (WIPO May 21, 2004), see also Drake Bliss v. Cyberline Ent., D2001-0718 (WIPO Sept. 20, 2001). The Panel is therefore satisfied that Complainant owns trademark rights on the mark “MATTEL.”

Identical and/or Confusingly Similar

It is clear, and is undisputed by Respondent, that the <mattel.org> domain name is identical to Complainant’s mark because it incorporates the MATTEL mark in its entirety.Furthermore, the Panel agrees with Complainant’s argument that the addition of the generic top-level domain “.org” is insufficient to distinguish the disputed domain name from Complainant’s mark.It is therefore very possible that the domain name causes Internet user confusion, precisely because the domain name incorporates – and essentially consists of – the MATTEL mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to Complainant’s mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to Complainant’s well-known and registered BMW trademarks).

Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three non-exclusive circumstances that can demonstrate a registrant’s rights or legitimate interests in the disputed domain name. Of more relevance to the present case Paragraph 4(c)(ii) of the Policy provides that a Respondent may demonstrate it has rights or legitimate interests in a domain name if it proves that:

“(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights”

As it clearly appears form the Response and supporting documents thereof, Respondent legally changed his last name from Muthyal to Mattel five years prior to registering the <mattel.org> domain name.Respondent adopted Mattel as his last name upon becoming a naturalized United States citizen because it was similar to his previous last name, easily pronounced and is similar to other names of his origin, such as Patel and Mittal. In light of this, and of the use Respondent and his family have made of his new legal surname “Mattel”, it is clear he is today commonly known by that last name. As such, the Panel finds that Respondent has rights and legitimate interests to use his legally and properly acquired surname on the internet. See Valazquez Jimenez v. Velazquez-Perez, D2001-0342 (WIPO May 8 2001) (“individual has a legitimate interest in a domain name that corresponds to that person’s name”); see also GA Modafine S.A. v. Mani.com, D2001-338 (WIPO May 30, 2001) ( “Respondent’s surname is Mani and he is commonly known as such. He is entitled to use it on the internet”).

In its Complaint, Complainant claims that “Mattel is not a proper surname and was likely adopted by Respondent for the purpose of asserting rights in the domain name.” Based on the evidence before it, the Panel cannot agree with this. The phonetic similarity between Respondent’s old surname and “Mattel,” as well as the fact that he changed this name immediately upon becoming a naturalized U.S. citizen – five years before his registration of the disputed domain name – makes such an assertion very unlikely. Moreover, it is not for Complainant to deem what is a “proper” surname simply because it owns a trademark on the same name in conjunction with the sale of certain wares. Rather, and pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent has rights in the disputed domain name because it reflects Respondent’s last name, and as such Respondent has been commonly known by the name “Mattel”, even if Respondent has acquired no trademark or service mark rights on the name. See G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that Respondent had rights and legitimate interests in the <armani.com> domain name, where the domain name reflects the initials of Respondent’s first and middle name, combined with its entire last name); see also Penguin Books Ltd. v. Katz, D2000-0204 (WIPO May 20, 2000) (finding that Respondent had rights or legitimate interests in the <penguin.com> domain name where the evidence established that it reflected Respondent’s nickname and the domain name was used to send electronic email for Respondent’s family).

Paragraph 4(c)(iii) of the Policy states that a Respondent may also demonstrate it has rights or legitimate interests in a domain name if it proves that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In its Complaint, Complainant argues that Respondent has not made any use of the domain name. However, Respondent claims – and, in light of all the evidence before it, the Panel has seen no reason to believe the contrary – that he, at the very least, has used the domain name <mattel.org> to construct e-mail addresses for himself and his family. That alone – notwithstanding the fact that the domain name today hosts Respondent’s personal website, which the Panel has verified on a proprio motu basis – is enough to rebut the charge that Respondent has not made any use of the disputed domain name.

Complainant also argues that Respondent likely adopted the surname Mattel for the purpose of asserting rights in the domain name. But, as Respondent points out in his Response, the surname was adopted five years before the registration of the disputed domain name. Furthermore, the evidence before the Panel indicates that Respondent acquired the disputed domain name in order to provide himself and his family with personal e-mail addresses that would be permanent and personal to him and that would not be changed in the future. Respondent has been using the gopi@mattel.org e-mail address regularly as his primary e-mail contact address and user I.D. for several accounts many years before the initiation of these proceedings. The Panel is therefore unable to conclude, based on the evidence before it, that Respondent changed his surname to “Mattel” for commercial reasons. As has been indicated, at the time of the drafting of this decision, the website located at the disputed domain name was being used as a personal page by Respondent.

For these reasons, the Panel also finds that Respondent has rights in the disputed domain name pursuant to Policy ¶ 4(c)(iii) because Respondent intended to use the domain name to post information about his family without the intent to use it for commercial gain, to mislead consumers, or to tarnish Complainant’s mark.See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that Respondent has rights and legitimate interests in the domain name where Respondent made a non-commercial use of BAJABOATS.COM and received no funds from users of the site connected to the domain name).

Registration and Use in Bad Faith

Complainant having failed to establish one of the elements under the ICANN Policy, it is unnecessary for the Panel to consider whether Respondent has registered and used the disputed domain name in bad faith.

Reverse Domain Name Hijacking

The Panel finds no evidence that Complainant brought the Complaint in bad faith. As it has been established above, it is clear that Complainant owns exclusive trademark rights on the mark “MATTEL” based on its registrations thereof. Moreover, Respondent’s registration of the <mattel.org> domain consists squarely of that mark. While the Panel has found that Respondent nonetheless has rights and legitimate interests in the domain name, it is not of the opinion the Complaint was brought in bad faith. In particular, it did not appear from the record that Complainant or its investigator knew when or why Respondent adopted the surname “Mattel”. At the very most, the Complaint may have been misconceived, since Complainant assumed rather rapidly that Respondent’s choice of surname had to be based on financial considerations and a prior intent to claim rights in the disputed domain name.See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Credit Suisse Group v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002) (finding no Reverse Domain Name Hijacking where “the Panel consider[ed] the Complaint to have been misconceived rather than brought in bad faith”).

DECISION

Complainant having failed to meet its burden to prove all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

The Honorable Carolyn M. Johnson (Ret.), David Sorkin, and Hugues G. Richard

Panelists
Dated: February 15, 2005

National Arbitration Forum