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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