Barbie Demands A Domain

localman writes: "In an ongoing legacy of tormenting Web site owners, Mattel Inc. is threatening legal action against my wife and I for planning to make a non-business all-girl video game clan site entitled thebarbies.com. Apparently they have a long history of censoring people. I've put up a page about the dispute, but what else can an individual do against a corporation?" Write a story? Seriously -- this is a standard trademark domain dispute, it's happened many times and will continue to happen -- maybe someone should write an FAQ for legitimate domain holders who get The Letter.

Comments

Bad choice of domain name on your part

[Masem]

I'm not saying that you choose a bad name for the clan; outside of web space, it's very hard to connect names and the like to trademarks (and I'd love to see anyone try to inforce that).

However, nowadays, with trademarks entering the domain frey, a bit of research should have been done to find out what problems might have come from using that domain name. Your research would probably have pointed to the various mattle legal battles that you spotted already, and you may have wanted to change the name or done something different.

Secondly, and more of my nit, why are you polluting the TLD .com with a non-commerical entity? An .org name would be better here, and would probably have taken mattle's site off from you.

While I'm not sure that your joke content caused teh problem, you should also have a bit more on your page as it stands now as to avoid issues with cybersquatting. Explain that this will be a clan page for "Tribes", and also state that in no way the page is connected with the Barbie trademark or MAttle. That might have also calmed the lawyers and made your case stronger when ICANN reviews it.

Re:Ever hear of "Trademark Dilution"?

[BlueUnderwear]

You mean, the original barbie dolls are NOT made in some third world country sweatshop?

Trademark dilution law is COMPLEX

[Seth Finkelstein]

I'm not a lawyer, but the topic of dilution is complex. In the end, a case like this is going to turn on the ability to fight. Look at: Trademark Dilution Summary:

The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Instead, all that is required is that use of a "famous" mark by a third party causes the dilution of the "distinctive quality" of the mark. Further clarification of the federal dilution cause of action is found in the following subsections:

BUT

However, the Act makes clear that certain actions will not be subject to the provisions of the Act. Specifically, the Act states that fair use (such as comparative advertising), noncommercial use (such as noncommercial web pages), and all forms of news reporting and news commentary (which would apparently include reporting and commentary appearing on the Internet) would not constitute dilution under the Act.

(emphasis added)

Explain this one...

[Rilke]

Let's see if I've got the SlashDot view on trademark correct.

The DigitalDivas should be able to stop Microsoft from using the term Digital Diva, even though their usage is very different, it's a fairly generic term, and virtually nobody thought that 'Digital Diva' was a reference to the prior group.

But Mattel is evil for objecting to the use of "TheBarbies" to refer to an online group for young girls, even though the reference to the doll is obvious to everybody.

C'mon, get real. It's simple theft of trademark. This guy's using the popularity of the Barbie doll to push his own .com site, nobody here seriously thinks the name was just accidental, do they?

Had TheBarbies.com been a site about barbecuing, then he'd have a point, but this is simple trademark theft. The nature of the original trademark has a direct connection to the new business.

If I bought www.quake.com to create a site about earthquakes, that's my right. But if I put up a gaming site, id software has every right to object to the theft of their trademarked name. And that's the way it should be.

Re:Ever hear of "Trademark Dilution"?

[BJH]

Who moderated this drivel up? A few facts for your edification:

1) Trademarks are valid only within certain well-defined areas - in other words, to conflict, the use of a trademark has to refer to something in the same or similar line of business.

2) The guy in this case is using it non-commercially. That exempts him from any claims upon his use of that trademark. In other words, if I'm not making any money out of it, I can call my webpage "Microsoft" or "IBM" or "Apple" and nobody can touch me.

3) Who says that the Barbie dolls on the market at the moment weren't made in Mexico? (Actually, they probably weren't - they're almost certainly made in China.)

Resource for domain defenders

[Sebbo]

...maybe someone should write an FAQ...

Dunno about a FAQ, but there's a mailing list/lobbying group at Ajax.org. Good luck.