Nintendo of America Inc. v. Antonio Buccoliero
Claim Number: FA1904001840422
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava of Perkins Coie LLP, Washington, USA. Respondent is Antonio Buccoliero (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nintendo24.nu>, registered with Gandi SAS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on April 24, 2019; the Forum received payment on April 24, 2019.
On April 25, 2019, Gandi SAS confirmed by e-mail to the Forum that the <nintendo24.nu> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nintendo24.nu. Also on April 30, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant markets and distributes video game systems, software, and related products. Complainant has rights in the NINTENDO (e.g. Reg. No. 1,628,966, registered Dec. 25, 1990) and NINTENDO 64 (e.g. Reg. No. 2,372,472, registered Aug. 1, 2000) marks through its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <nintendo24.nu> is confusingly similar to Complainant’s NINTENDO mark as it uses the entirety of the mark in the domain name and only adds the number “24.” Additionally, the domain name is confusingly similar to Complainant’s NINTENDO 64 mark as it merely changes a single number.
Respondent has no rights or legitimate interests in the <nintendo24.nu> domain name because respondent is not commonly known by the disputed domain name. Additionally, Respondent illegally uses the <nintendo24.nu> domain name to impersonate Complainant and sell counterfeit products, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith because Respondent uses the <nintendo24.nu> domain to illegally sell counterfeit products, disrupting Complainant’s business for commercial gain. Lastly, Respondent knew of Complainant’s rights in the NINTENDO mark due to its worldwide and global fame, along with Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <nintendo24.nu> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the NINTENDO and NINTENDO 64 marks through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for both the NINTENDO (e.g. Reg. No. 1,628,966, registered Dec. 25, 1990) and NINTENDO 64 (e.g. Reg. No. 2,372,472, registered Aug. 1, 2000) marks. The Panel finds that Complainant has rights in the NINTENDO and NINTENDO 64 marks per Policy ¶ 4(a)(i).
Complainant additionally contends that Respondent’s <nintendo24.nu> domain name is confusingly similar to Complainant’s NINTENDO mark because Respondent only added the number “24” to the mark, and is confusingly similar to the NINTENDO 64 mark because it changes one number to another number. Adding a number or substituting a number for another does not distinguish a domain name from an established mark. See Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (finding confusing similarity where the domain name added the number “24” to an acronym for the FAMILY GUY mark); see also Retail Royalty Company and AEO Management Co. v. americaneaglekids, FA 1397714 (Forum Aug. 26, 2011) (finding confusing similarity where the domain name combined two marks and deleted the number “77” from one of the marks). The addition of the “.nu” country code top-level domain (“ccTLD”) is irrelevant in the analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel finds that Respondent’s <nintendo24.nu> domain name is confusingly similar to Complainant’s NINTENDO and NINTENDO 64 marks per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <nintendo24.nu> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s NINTENDO or NINTENDO 64 marks. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that a respondent is not commonly known by a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information identifies Respondent as “Antonio Buccoliero” and there is nothing in the record to suggest that Respondent is authorized to use the marks. The Panel finds that Respondent is not commonly known by the <nintendo24.nu> domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent uses the <nintendo24.nu> domain name to illegally impersonate Complainant by selling counterfeit products, which does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Panels have previously held that impersonating a complainant in order to sell counterfeit goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”); see also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (“Using a confusingly similar domain name to offer counterfeit versions of a complainant’s goods and services is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provided Panel with screenshots of the resolving domain that display Complainant’s NINTENDO mark prominently along with Complainant’s products being listed for sale at reduced prices. The Panel finds that Respondent’s use of the <nintendo24.nu> domain name to impersonate Complainant and sell counterfeit products does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). The Panel finds that Respondent lacks rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith as Respondent uses the <nintendo24.nu> domain name to illegally sell counterfeit products. Panels have previously held that selling counterfeit goods can provide evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant has provided screenshots of Respondent’s <nintendo24.nu> domain name. These screenshots show Complainant’s NINTENDO marks along with images of Complainant’s products purportedly for sale at reduced prices. Therefore, the Panel finds that Respondent registered the <nintendo24.nu> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues Respondent was well-aware of Complainant’s rights in the NINTENDO mark at the time Respondent registered and subsequently used the <nintendo24.nu> domain name and this indicates bad faith. Actual knowledge of Complainant’s rights in the mark prior to registering a confusingly similar domain name can adequately evince find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant contends that Respondent’s knowledge can be inferred given its extensive, global use, and fame, along with Respondent’s use of the website to display counterfeit products. The Panel finds that Respondent had actual notice of Complainant’s rights in the NINTENDO and NINTENDO 64 marks, and registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <nintendo24.nu> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 28, 2019
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