The Complainant (American Girl, LLC - a wholly owned subsidiary of Mattel, Inc.) has operated the website americangirl.com since 1997 and owned the trade-mark AMERICAN GIRL since 1986. The disputed website, registered in 2004, led to a pay per click site with sponsored links to competitors of the Complainant.
Previously, the Complainant filed a CDRP Complaint against this same Registrant but the panelist in that case found that the Complainant had failed to demonstrate that the Registrant had no legitimate interest in the domain. The Registrant then brought this second complaint. The Panel held that the Complainant could bring a complaint regarding the same domain name because the claim was not brought to harass the Registrant and because the complainant provided substantial new evidence concerning the Registrant's activities.
The Panel found that the Complainant has rights in the Mark which predate the registration of the Domain. The Panel further found that the Complainant had no legitimate interest in the Mark – recently resolving the Domain Name to a Facebook account was a transparent attempt to legitimize the Domain Name. Regarding the bad faith requirement, the Panel noted that the Domain Name initially had a notice on the website offering it for sale, which the panel found met the bad faith requirement under section 3.5(a). The Panel also found it was likely that the Registrant chose the Domain Name based on the confusion it would cause the public in an attempt profit financially.
You can read the decision here.
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