By-Lined Article
David beats Goliath in domain-name dispute
By Eric J. Sinrod
March 23, 2005
USAToday.com
Mattel, Inc. brought a domain name arbitration proceeding recently against a man by the name of Gopi Mattel seeking the transfer mattel.org. In this instance, David, aka Gopi, beat Goliath, aka the well-known toy manufacturer. Mattel, Inc. argued that Gopi Mattel's domain name improperly incorporated its MATTEL registered trademark. Mattel, Inc. asserted that Gopi Mattel had no legitimate right or use of the mark, and contended that he purposely changed his name from Muthyal to Mattel precisely so that he could capitalize on the mark.
Gopi Mattel responded that Mattel, Inc. waited too long to complain — almost four years after he obtained the mattel.org domain name. He also proved that he changed his surname in 1996, when he naturalized as a U.S. citizen — five years before he registered the domain name. He demonstrated that his certificate of naturalization, his driver's license and other supporting documents reflected that he has gone by the Mattel name consistently. He also set forth that he has not improperly sought to sell the domain name or to disrupt Mattel Inc.'s business.
The arbitration panel agreed with Gopi Mattel, even though it found Mattel, Inc. has trademark rights in the mark MATTEL and the domain name included that identical mark. The panel concluded that Gopi Mattel had valid rights in his own surname, even though he changed to that surname later in life.
This case provides yet another example that sometimes David does beat Goliath.
Eric Sinrod is a partner in the San Francisco office of Duane Morris (www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. His column appears Wednesdays at USATODAY.com. His Web site is www.sinrodlaw.com, and he can be reached at . To receive a weekly e-mail link to Mr. Sinrod's columns, please send an e-mail with the word Subscribe in the Subject line to .
Reprinted here with permission from USAToday.com.
