Mattel, Inc. owns trademarks for BARBIE, FASHIONISTAS and SO IN STYLE. The Respondent in Mattel, Inc. v. jaomadesigns, FA1001001303036 (Nat. Arb. Forum March 3, 2010) admitted that the Complainant owned the trademarks but argued that it “has failed to demonstrate ownership pertaining to the following disputed domain names: <barbiefashionista.com>, <brbielovesstila.com>fashionistabarbie.com>.” In so doing the Respondent misapprehends the rights in issue. Complainant “does not have the burden to show rights in the infringing domain name, only rights in the mark…,” Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009). The argument that a complainant must have rights in the domain name “turns this element of the Policy on its head,” Id.
Although there are limited circumstances under which respondents can avoid violation of the Policy by incorporating a trademark (coupling it with another term that identifies a wholly different business, for example, Prudential Insurance Co. of America v. Quick Net Communications, FA 146242 (Nat. Arb. Forum March 27, 2003) (<prudentialmotors.com>) rights or legitimate interests cannot be acquired by mixing and matching variations of trademarks well established in the marketplace. The order in which terms are written — <barbiefashionista> or <fasionistabarbie> — is as inconsequential as adding or omitting the plural form. “Barbie” is the dominant term in all the domain names. Respondent’s fallback position in Mattel that the domain names could not be “confusing to the Complainant’s sites since they are fansites, whereas Complainant site is the official site for Barbie, which anyone can easily tell” is equally unavailing. Even if a site were truly what it purported to be a respondent is not permitted to “commercially gain” from the targeted trademark.
The belief that adding a disclaimer on the website trumps the complainant’s exclusivity of its trademarks is misguided. “The disputed domains are also not causing confusion with the Complainant official sites, and marks because everyone who has ever seen a television commercial knows that to find Barbie, you go to Barbie.com. Even an average internet user does not necessarily expect to find every site containing the word BARBIE, to be an official Barbie site.” But, the “average internet user” can be misled into believing that the confusingly similar domain name is an “official” site.
It is not certainty of confusion but “likelihood of confusion” that is a violation of the Policy. In response, the Panel noted “that the Respondent may have presented a more persuasive case had ‘Barbie’ not been included in its domain names.” That is, while BARBIE is a famous trademark, “fashionistas” (regardless of tense) is generic and can have an independent non-infringing existence. Fusing identical or confusingly separate trademarks into a new string is no less a violation of the Policy than appropriating each trademark singly when the respondent’s purpose is to capture the omplainant’s audience by directing it to a third party website.