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Mattel, Inc. v. Internet Dimensions, Inc.

2000 U.S. Dist. LEXIS 9747 (S.D.N.Y. 2000)

Baer, District Judge. Plaintiff Mattel, Inc. ("Mattel"), commenced this action against defendants Internet Dimensions, Inc. ("Internet Dimensions"), and Benjamin Schiff asserting causes of action for (1) trademark infringement under Section 43(a) of the Lanham Act, (2) trademark dilution under Section 43(c) of the Lanham Act, and (3) violation of the Anti-Cybersquatting Consumer Protection Act of 1999 ("ACPA" or "the Act"). Mattel is a publicly held corporation organized and existing under the laws of the State of Delaware. One of its principal products is the trademarked "Barbie" doll.

In 1991, the Second Circuit observed that "the 'Barbie' doll is the best selling toy doll in the world96 percent of three- to eleven-year-old girls in the United States own at least one. In the past 30 years 600 million Barbie dolls have been soldone is sold every two secondsand, in 1990 alone, 26 million of them were sold, earning gross revenues for Mattel of $740 million."

Internet Dimensions is a corporation organized and existing under the laws of the State of Nevada. Internet Dimensions owns Internet domain names for sites that provide, among other things, "adult" entertainment. One of its domain names is "barbiesplaypen.com."

Mattel's primary claim in this action is that defendants violated the Anti-Cybersquatting Consumer Protection Act. The ACPA, signed into law on November 29, 1999, provides that "a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark." It also provides that damages can be awarded for violations of the Act.

The ACPA was passed to "protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners, by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marksa practice commonly referred to as 'cybersquatting.'" The Act provides civil liability for cybersquatting as follows:

A person shall be liable in a civil action by the owner of a mark if that person (i) has a bad faith intent to profit from that mark and (ii) registers, traffics in, or uses a domain name that: (1) is identical or confusingly similar to a mark that is distinctive at the time of registration of the domain; (2) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; (3) is a trademark, word, or name.

While there is no particular inherent distinctiveness in the name "Barbie," the mark, as it applies to Mattel, has acquired distinctiveness through four decades of exposure in the American consumer market. The Court concludes that the name "Barbie" and the font normally used to advertise BARBIE products is widely recognized throughout the world on the basis of the marketing efforts that have been undertaken by Mattel over the past four decades. The Court finds that the trademark BARBIE is both "distinctive" and "famous" for purposes of 1125(d).

The next question is whether the domain name "barbiesplaypen.com" is "identical or confusingly similar to" the BARBIE mark. The similarities between "barbiesplaypen.com" and the BARBIE trademark are as follows: (1) both contain the name "barbie;" (2) the name "Barbie" on the front page of the web site and the logo BARBIE both have approximately the same font, slant, size, etc.; (3) both BARBIE and "barbiesplaypen.com " are inextricably associated with the verb "play," in the broad sense of the term. All of the above similarities make the web site 'barbiesplaypen.com," and its domain name, "confusingly similar," though not "identical" to the BARBIE mark.

I next turn to the issue of whether the defendants registered, used, or trafficked in the domain name "barbiesplaypen.com" with a "bad faith intent to profit" from the Barbie mark. We find that the defendants did engage in a "bad faith attempt to profit" from the BARBIE trademark by maintaining the infringing domain name and web site. It is clear that the defendants expected the same advertising result as Mattel from the use of the domain name "barbiesplaypen.com." The defendants must have expected that consumers searching under the word BARBIE, or perhaps the words "BARBIE and PLAY," in an Internet search engine would be directed to defendants' pornographic "barbiesplaypen.com" site. The diversion of Internet users to a site containing pornographic images may well tarnish the image of Mattel's BARBIE products in the minds of those consumers.

Under the ACPA, Mattel is entitled to an order directing defendants to transfer the registration of the domain name "barbiesplaypen.com" to Mattel. This Court finds that a permanent injunction barring defendants from the commercial use and infringement of any of Mattel's BARBIE trademarks is also warranted. Finally, the plaintiff is also entitled to statutory damages and attorneys' fees. SO ORDERED.

Case Highlights

• A party can be liable for trademark infringement even if it sells a product dissimilar to the products sold by the trademark owner. For example, if the infringing use of the trademark "tarnishes" the image of the trademark owner, then the user is guilty of trademark dilution.
• Domain names serve to identify the Internet user. Therefore, businesses prefer to use their trade names as part of their domain names.
• Cybersquatting is the bad faith registration of distinctive trademarks as Internet domain names.
• The Anti-Cybersquatting Consumer Protection Act (ACPA) protects trademark owners from the bad faith use of their trade name by others who register infringing domain names.