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Mattel v. Internet Dimensions

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Citation Edit

Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q.2d (BNA) 1620 (S.D.N.Y. 2000).

Factual Background Edit

Plaintiff Mattel, maker of “BARBIE” dolls, brought this action against Internet Dimensions Inc. and its owner, Benjamin Schiff, operators of a pornographic website at the domain name “barbiesplaypen.com.”

Trial Court Proceedings Edit

After a bench trial, the court held that defendants’ use and registration of “barbiesplaypen.com” violated the ACPA because (1) the BARBIE mark was distinctive and famous, (2) “barbiesplaypen.com” was confusingly similar to plaintiff’s BARBIE mark, and (3) defendants registered and used “barbiesplaypen.com” with a bad-faith intent to profit.

In finding a bad-faith intent to profit, the court took into account, among other factors, defendants’ registering of multiple domain names containing third-party trademarks and supplying false contact information when registering those names. The court ordered defendants to transfer the domain name to Mattel and entered a permanent injunction barring defendants from the commercial use and infringement of any of Mattel’s BARBIE trademarks.

Although at the time of trial the “barbiesplaypen.com” website contained no content other than a directory, the court found that this “use” of the domain name was sufficient to trigger the statutory damage provision of the ACPA as statutory damages applied to “post-enactment registrations, uses or traffickings.” The court reserved judgment, however, on statutory damages and attorney’s fees.

Defendants’ use and registration of “barbiesplaypen.com” also tarnished Mattel’s BARBIE trademark under the FTDA by associating a teenage icon with the unwholesome activity of pornography.

The court awarded Mattel an injunction restraining further acts of dilution and deferred the issues of damages and attorney’s fees. Finally, the court held that Mr. Schiff, the sole officer, director, employee, and shareholder of defendant Internet Dimensions, could be held personally liable for money damages and subject to injunctive relief. “To deny such relief would leave Mr. Schiff free to form another corporate entity for the sole purpose of continuing his infringement of Mattel’s trademarks.”

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