Internet Trademark Case Summaries
Mattel, Inc. v. Adventure Apparel
2001 U.S. Dist. LEXIS 13885 (S.D.N.Y. Sept. 7, 2001)
Defendant, a seller of women's clothing and accessories, registered the domain names "barbiesbeachwear.com" and "barbiesclothing.com" and forwarded them to defendant's website located at "adventureapparel.com." Plaintiff, owner of the registered mark BARBIE for dolls, moved for summary judgment on its ACPA claim. The court granted plaintiff's motion, finding that plaintiff's BARBIE mark was both famous and distinctive, and that the names "barbiesbeachwear.com," and "barbiesclothing.com" were dilutive of the BARBIE mark. The court also held that defendant had a bad-faith intent to profit from use of the BARBIE mark because (1) defendant did not have any intellectual-property rights in the BARBIE mark; (2) neither defendant nor his business was commonly known by any portion of the domain names; (3) defendant did not use the trademarks BARBIE, BARBIESBEACHWEAR, or BARBIESCLOTHING before registering the domain names; and (4) defendant intended to divert consumers to his Adventure Apparel website by creating a likelihood of confusion. Defendant unsuccessfully argued that his registration of "barbiesbeachwear.com" and "barbiesclothing.com" constituted fair use because he intended to use the domain names for parody websites. Not only did defendant fail to create a parody site, the fact that the domain names connected to a website selling women's clothing, boots, and breast enhancement products undermined any purported intent to "parody the negative social impact of portraying women in a distorted and socially harmful manner . . . ." As to remedies, the court denied plaintiff's request for transfer of the domain names to plaintiff. The court instead cancelled the registrations, noting that there is "a conceivable, non-infringing use of the domain names" and that plaintiff failed to make a showing that it was "entitled" to the names. Because plaintiff suffered only minimal harm, the court awarded only $2,000 in statutory damages, $1,000 for each name. The court did not award attorney's fees, however, noting that defendant, who proceeded pro se, did not engage in any dilatory litigation tactics and "proceeded in the belief that what he saw as a de minimus violation of the ACPA was insufficient for jurisdictional and liability purposes." Finally, the court issued a broad injunction, enjoining defendant from "further violations of the ACPA with respect to Mattel's trademarks."