WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mattel, Inc. v. Manka Camara

Case No. D2015-2195

1. The Parties

The Complainant is Mattel, Inc. of El Segundo, California, United States of America, represented by Steven M. Levy, United States of America (“United States”).

The Respondent is Manka Camara of Paris, France.

2. The Domain Name and Registrar

The disputed domain name <be-mattel.com> is registered with Register.IT SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Further to the Center’s communication (transmitted in both English and French) regarding the language of proceeding, the Complainant requested English to be the language of proceeding on December 9, 2015. The Respondent did not submit any comment regarding this request.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint in both French and English, and the proceedings commenced on December 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2016.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on January 22, 2016. 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.

The Complainant requests that the balance of this proceeding be conducted in English. The Registrar verification response received by the Center notes that the specific language of the registration agreement is French. The Respondent is Manka Camara, an unknown entity with an address in Paris, where the entity could not be located by the courier. The Respondent has not filed a response to the Complaint nor communicated in any manner with the Complainant. The Respondent has thus made no submission about the applicable language for these proceedings, despite having been given the opportunity to do so by the Center. The Complainant is a multinational company based in the United States and asserts that it conducts its business globally in English. In the circumstances and in the interests of fairness, in particular taking into account the expense of translating documents into French , the Panel holds that the balance of these proceedings should be conducted in English and the Panel decision issued in that language.

4. Factual Background

The Complainant asserts that it owns many trademark registrations around the world for the trademark MATTEL including as follows:

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is the worldwide leader in the design, manufacture and marketing of toys and family products through it is wholly-owned subsidiaries. It cites a number of brands that it owns, such as Hot Wheels, Monster High, American Girl, Thomas & Friends and Fisher-Price. The Complainant’s worldwide headquarters are in El Segundo, California, United States and it has offices in North America, Central and South America, Europe, and the Asia Pacific region. The Complainant asserts that the Mattel companies employ nearly 30,000 people in 40 countries and territories, and distribute, market or sell products in more than 150 nations.

The Complainant owns the MATTEL trademarks which it submits have been extensively used and promoted for many years. MATTEL products generated over USD 6 billion in income for the period 2010-2014. Its products are sold through a variety of retailers including Walmart and also online, inter alia via its “www.mattel.com” website. The Complainant contends that as a result the MATTEL trademark has become “overwhelmingly famous” and recognized all over the world.

According to the Complainant the disputed domain name is confusingly similar on its face to the Complainant’s MATTEL trademark. The term “mattel” is entirely fanciful and has no generic meaning and is thus distinctive as a trademark. As a result, Internet users will, according to the Complainant, likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement with the Complainant.

According to the Complainant the addition of generic terms or acronyms to a trademark within a domain name has often been held by UDRP panels not to detract from a finding of confusing similarity. In this particular case, Internet users are likely to conclude that “be” stands for “Belgium” and therefore references the Complainant’s subsidiary in that country. According to the Complainant the actions of the Respondent have also caused initial interest confusion.

According to the Complainant, the Respondent has used the disputed domain name to send emails to suppliers of the Mattel companies in an attempt to impersonate the Complainant and to defraud the targeted suppliers. According to the Complainant, an email concerned is sent from an email address which incorporates the disputed domain name. The Respondent thereby attempts to pose as a representative of the Complainant’s subsidiary Belgian office, Mattel Belgium NV. The Respondent contacts the Complainant’s suppliers and asks them to pay an invoice from a Mattel company to a nominate account. According to the Complainant, the Respondent even uses a counterfeit version of the Complainant’s subsidiary Belgian office letterhead. To sustain the image of legitimacy, the Respondent had the <be-mattel.com> domain name redirect to the Complainant’s legitimate “www.mattel.com” website.

According to the Complainant these activities do not give rise to rights or legitimate interests, as has been previously held. They are clearly not bona fide activities.

Further, the Complainant asserts that the Respondent is not commonly known by the <be-mattel.com> domain name or the name “Mattel” nor does the Respondent operate a legitimate business or other organization under MATTEL marks or names. It does not own any trademark or service mark rights in these names. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, according to the Complainant. Finally the Complainant also asserts that by way of its fraudulent use, the Respondent has tarnished and diluted the MATTEL trademarks.

In terms of bad faith, the Complainant submits that the Respondent had actual notice of the Complainant’s rights in the MATTEL marks because of its extensive prior use of the marks, as well as the Complainant’s various trademark registrations, predating the registration of the disputed domain name by the Respondent. The Complainant contends that the Respondent is attempting to obtain commercial gain from its use of emails, as described above. Such use is part of a fraudulent scheme instigated by the Respondent to defraud suppliers to Mattel companies, the Complainant contends. Many prior UDRP panelists have readily found bad faith registration and use under similar circumstances, the Complainant asserts.

Finally, the Complainant asserts that the Registrar and hosting provider suspended the disputed domain name upon receipt of the Complainant’s notification. According to the Complainant, this action further demonstrates that the Respondent has perpetrated a fraudulent scheme and has registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant’s registered trademark MATTEL. However, it incorporates that trademark in its entirety and also separates it from the rest of the disputed domain name with a dash, which gives it clear prominence. The addition of the prefix “be” suggests little other than that the disputed domain name is connected with the Complainant’s operations or offices in Belgium. It does nothing to dispel the suggestion inherent in the disputed domain name that there is some legitimate connection between a website to which the disputed domain name resolves, and the Complainant. Such a connection does not in fact exist. The disputed domain has no other or compendious meaning, and it has an inherently confusing and misleading suggestion.

Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s MATTEL trademark.

B. Rights or Legitimate Interests

The Respondent has filed no response in this matter. The Complainant asserts that the Respondent has used the disputed domain name to attempt to perpetrate a fraud upon its suppliers, by masquerading as a legitimate member of the Mattel group of companies. These companies have a legitimate presence in many jurisdictions, including in Belgium. The Complainant submits evidence to the Panel to substantiate its contention and there is no contradiction from the Respondent. It is not possible for rights or legitimate interests to vest in a respondent who has attempted to use a disputed domain name to perpetrate a dishonest scheme for the purpose of obtaining financial or commercial advantage by impersonating a complainant.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The MATTEL trademarks have been used in commerce in relation to the sales, advertising and promotion of various toys and toy products for many years and in many countries. The Complainant has a very considerable turnover partially or wholly attributable to its brand and associated operations. It is inconceivable that the Respondent was not fully aware of the Complainant’s goodwill in the MATTEL trademarks prior to registration. In any case upon the matter placed before the Panel, the Respondent used the disputed domain name to establish an elaborate scheme where it impersonated suppliers of the Complainant for financial gain, inter alia by using and reproducing the disputed domain name. Clearly therefore the Respondent was fully aware of the Complainant and the nature of its activities. The registration and use of the disputed domain name for the purpose of establishing a dishonest scheme which seeks to mislead other parties into thinking the Respondent is or represents a company belonging to the Mattel group is clearly in bad faith.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <be-mattel.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: January 31, 2016