Mattel loses fight for 'skeletor.com'
While He-Man and his nemesis Skeletor have been fighting an epic battle between the forces of good and evil, the owner of the 'He-Man and the Masters of the Universe' line of action figures has been fighting its own battle against the registrant of 'skeletor.com'. Mattel Inc recently lost its Uniform Domain Name Dispute Resolution Policy challenge against the registrant of the domain name in the National Arbitration Forum decision of Mattel Inc v Kim Dong Jin.
Sole panellist James Carmody acknowledged that the domain name was identical to Mattel's registered trademark SKELETOR. Additionally, Carmody determined that the registrant, a Korean individual, did not have any rights or legitimate interest in the domain name because he did not produce evidence showing authorization for, or prior use of, the trademarked word. Carmody took into account the registrant's failure to elaborate upon his claim that he intended to dedicate the site to skeletons.
Despite these findings, Carmody declined to transfer the domain name to Mattel, reasoning that the company failed to show that 'skeletor.com' had been registered and used in bad faith. According to Carmody, Mattel did not provide any factual evidence that the registrant was attempting to prevent Mattel from using the website to promote the Masters of the Universe product line. Carmody indicated that if Mattel had sent the registrant a cease and desist letter or had argued that the SKELETOR mark enjoyed worldwide fame that would render any infringement wilful, Mattel may have succeeded in its action.
Mattel recently announced its plans to re-launch the popular 'He-Man and the Masters of the Universe' product line, and had planned to use the 'skeletor.com' domain name. Although Mattel has not used its trademarks associated with its Masters of the Universe line in connection with a cartoon series for many years, it never abandoned the marks. Mattel is expected to vigorously enforce its rights as it launches the updated product line, so this case may be re-filed as an Anticybersquatting Consumer Protection Act action.
James L Bikoff and Patrick L Jones, Silverberg, Goldman & Bikoff, LLP, Washington DC
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