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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Mattel, Inc. v. Adventure Apparel

2001 WL 1035140 (S.D.N.Y. September 19, 2001)

Court grants Mattel, the holder of numerous trademarks in and including the word "Barbie," summary judgment, holding that defendant violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering the domain names "barbiesbeachwear.com" and "barbiesclothing.com," causing those who accessed such domains to view a commercial web site selling women's apparel operated by the defendant, and effectuating a single $10 sale of merchandise to an investigator hired by plaintiff who accessed one of the domains in question. The court ordered defendant to relinquish the domain names at issue, and to pay Mattel $2000 in damages. The court declined to award Mattel its attorneys' fees.

Mattel is a large toy manufacturer which sells, among other things, the Barbie doll. Mattel is the owner of numerous federal trademarks in and/or containing the word "Barbie." Mattel does not, however, hold a trademark in either the phrase "Barbies beachwear" or "Barbies clothing."

Defendant Adventure Apparel is a sole proprietorship owned by Jeffrey Groch. Adventure Apparel operates the adventureapparel.com web site at which it sells swimwear and tanning sessions. Adventure has two places of business in Tuscon, Arizona. Defendant registered the domain names "barbiesbeachwear.com" and "barbiesclothing.com." To meet the domain name registrar's registration requirements, the domain name holder either must have the domain names he seeks to register hosted by a service provider, or "parked" at an existing domain name that is hosted by a service provider. As explained by the court, a domain name that is "parked" at another site will cause the web site that appears at that other site to also appear in response to requests for the "parked" domain name. Defendant elected to park the domain names in question at his existing "adventureapparel.com" domain.

An investigator, hired by Mattel, accessed the url barbiesbeachwear.com. This caused the investigator to be shown the adventureapparel.com web site, at which the investigator purchased a single $10 pair of stockings. No other commercial transactions were conducted at either of the two domain names in question. Defendant apparently did not register these domains with any search engine, and did not offer to sell them to plaintiff. Nor, apparently, did defendant register multiple domain names containing the marks of another.

Claiming that this conduct violated the Anticybersquatting Consumer Protection Act, 15 U.S.C. Section 1125(d)("ACPA"), Mattel brought suit. The court agreed, and awarded plaintiff summary judgment.

According to the court, there are two requirements to establish a violation of the ACPA. The first requirement is that the domain name in question "is either (a) dilutive of a famous trademark or (b) confusingly similar to a distinctive trademark." The court found that under either test, this requirement was satisfied. Thus the court found that "Barbie" is a famous trademark, and that the domain names in question were dilutive of that mark. The court further found that the "Barbie" mark was distinctive, and that the domain names in question were confusingly similar to that mark.

The second element needed to establish a violation of the ACPA is a finding that defendant "registered, used or trafficked in the domain name with a bad faith intent to profit from the trademark." The statute lists nine factors which courts may consider in determining whether defendant acted in bad faith. After analyzing these factors, the court determined that defendant had acted in bad faith. In reaching this conclusion, the court relied on the facts that defendant did not own any intellectual property rights in the domain names in question, was not known by and had not used any portion of the domain names in question prior to registration thereof, had pointed the domains to a commercial site, effectuated a commercial sale thereat, and used a famous and distinctive mark in the domain names at issue.

Defendant sought to defend his conduct by submitting an affidavit in which he claimed that he had registered the domains to create a parody site. No such parody site was ever created, however. The court held that this claim was undercut by having parked the domain names at a commercial site, and effectuating a sale thereat. The court also stated:

Though the single sale does not constitute significant commerce, it does nothing to support the defendant's belated attempt to assert protection on this ground. As the Third Circuit recently noted 'we are aware of no authority providing that defendant's fair use of a distinctive and famous mark only after the filing of a complaint alleging infringement can absolve that defendant of liability.

Under the ACPA, the court is authorized, in its discretion, to either cancel a domain name or order it transferred to the trademark owner. The court is also empowered to award statutory damages in lieu of actual damages in an amount in excess of $1000 and up to $100,000 as the court considers just under 15 USC Section 1117(d). Lastly, the court may award plaintiff attorneys' fees.

The court determined that the appropriate remedy here was to direct that defendant's registration of the domain names at issue be cancelled, and awarded plaintiff $2000 in statutory damages, $1000 for each of the two domain names registered. It did not award plaintiff attorneys' fees, nor did it direct the defendant to transfer the domain names at issue to plaintiff. In reaching this conclusion, the court stated:

The need for deterrence is not exceptional in this case since little if any actual harm has been done Mattel, considering the minuscule number of web hits and the solitary sale of a pair of stockings. Damages in the amount of $2000, $1000 for each violative domain name - the minimum under the statute - is sufficient to achieve the ends of the ACPA.
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