Barbie Beats Cybersquatters

Mattel invokes new cyber-copyright protection law to shut down porn site.

Jennifer DiSabatino, Computerworld Online

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Legislation approved last year to protect companies from cybersquatters passed a critical test recently, when a judge from the Southern District of New York ordered a pornographic Web site to stop using Mattel's trademark "Barbie" as part of its domain name. Mattel sued the porn site's parent company, Internet Dimensions, for trademark infringement when the toy company discovered the site called Barbiesplaypen.com. The judge issued a cease-and-desist order and the site has shut down.

A Mattel spokesperson says the company will defend its brand names, even if no complaints were made by customers.

"For us, it really is about enforcing our rights," says Lisa Marie Bongiovanni, Mattel spokesperson. "We have incredible equity in our brands."

While she says she knows of no specific complaints by customers regarding Barbiesplaypen.com, Bongiovanni says Mattel won't risk a customer thinking it sponsors a porn site, or any non-Mattel site. The company will go after anyone who uses a Mattel trademark, she says.

Phone calls and e-mail sent to Benjamin Schiff, Internet Dimensions' sole officer, director and employee, weren't returned.

Protecting Property

"The case strengthens the ability of the mark owner to protect its mark from tarnishment from uses on the Web," says Houston-based lawyer Robert Lytle, a legal expert on cybersquatting at Washington-based firm Howrey, Simon, Arnold & White.

The Anti-Cybersquatting Consumer Protection Act, passed last year, adds protection to brand names and trademarks on the Internet. The law is intended to prevent or provide relief from cybersquatting--the practice of using someone else's name or brand to market other merchandise. It also helps individuals and companies whose names are "held hostage" for a fee, Lytle says. (See "Congress Targets Cybersquatters".)

The law also provides immediate relief for victims of cybersquatting, Lytle says. A company or person can get an injunction on a Web site if the owner can't be found. The injunction forces the Web site's Internet service provider to deactivate the site.

While recovering damages may be more difficult, the court order prevents further damage to a name brand, he says. Sites such as Barbiesplaypen.com, "have the effect of tarnishing [the trademarked brand's] image," Lytle says.

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