Wednesday, September 5, 2007

Mattel Sues China -- China Barbie that is.

While the rest of the world focuses its attention on Mattel’s seemingly endless troubles with its toys made in China, those of us in the trademark world are focused on another matter involving Mattel and China.

On August 21, 2007, Mattell filed a lawsuit against Global China Networks LLC and Terri Gibson alleging cybersquatting (15 USC Sec. 1125(d)), trademark dilution (15 USC Sec. 1125(c)), trademark infringement (15 USC Sec. 1125(a)) and common law unfair competition, with respect to Mattel’s “famous” Barbie trademark. A copy of the complaint can be found here.

The suit centers around the domain name, an adult website which is owned by Global China Networks (with Terri Gibson the “China Barbie” pictured thereon). Mattel is seeking a permanent injunction preventing Global China from cybersquatting, diluting and infringing the Barbie trademarks and seeking an order compelling Global China to transfer the domain name to Mattel. The suit also asks for general damages (and/or Global China’s profits from its willful infringement and/or dilution), treble damages or profits, statutory damages from Global China’s use of the domain name, and punitive damages.

Much of the complaint is focused on proving the fame of the Barbie trademark by detailing the history of Barbie, the large portfolio of trademarks registered by Mattel with respect to Barbie, and the worldwide sales generated by Barbie dolls. For an analysis of the merits of the complaint, see Prof. Mark J. Randazza’s blog entry here.

He suggests that the lawsuit may have been Mattel’s attempt to trick the search engines so that when someone does a search for Mattell and China, the story of the lawsuit appears rather than stories about toy recalls. If this is the case, then someone at Mattel deserves a Machiavelli award.

And there may be some validity to this claim given Mattel’s eagerness to go straight to federal court to get the domain name transferred rather than by filing a lower-cost arbitration proceeding under ICAAN’s Uniform Domain-Name Dispute-Resolution Policy.

Or it may just be that Mattel does not want any adult use associated with its Barbie trademark. After all, Mattel has not gone after the domains and, but neither of those currently host any adult content. Contrast this with, which appears to have been used for adult purposes back in 2001 if you look at the Internet Archives Wayback Machine.

Of course, Mattel may also be dealing with a certain type of cybersquatter that does not relinquish its domain names even after a successful arbitration proceeding. See this June 20, 2007 story published by RedOrbit regarding a company named Texas International Property Associates. Despite several companies receiving favorable UDRP arbitration decisions against the company, the company continues to retain the domain name and are pursuing actions in federal court to force the transfer of the domain names.