Nintendo of America Inc. v. Elsa D. Sarramian Ontalba
Claim Number: FA2004001892059
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Elsa D. Sarramian Ontalba (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <switchrls.club>, registered with NameSilo, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2020; the Forum received payment on April 14, 2020.
On April 15, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <switchrls.club> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2020 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@switchrls.club. Also on April 16, 2020, 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 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Nintendo of America, Inc., markets and distributes video game systems including the Nintendo Switch game console. Complainant has rights in the NINTENDO SWITCH mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 5,477,313, registered on May 22, 2018).
2. Respondent’s <switchrls.club>[i] domain name is confusingly similar to Complainant’s NINTENDO SWITCH mark as it includes the entirety of the distinctive portion of the mark and adding the term “rls.”
3. Respondent has no rights or legitimate interests in the <switchrls.club> domain name. Respondent is not licensed or authorized to use Complainant’s NINTENDO SWITCH mark and is not commonly known by the domain name.
4. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to sell pirated copies of Complainant’s games. Moreover, the domain name’s resolving website uses Complainant’s copyrighted logos and characters to market these pirated games.
5. Respondent registered and uses the <switchrls.club> domain name in bad faith. Respondent engages in an illegal activity by selling pirated copies of Complainant’s games. Respondent disrupts Complainant’s business by enabling users to avoid buying legitimate copies of Complainant’s games.
6. Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH mark at the time of registration of the <switchrls.club> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NINTENDO SWITCH mark. Respondent’s domain name is confusingly similar to Complainant’s NINTENDO SWITCH mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <switchrls.club> domain name and that Respondent registered and uses the domain name in bad faith.
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 next argues that Respondent’s <switchrls.club> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the entirety of the distinctive portion of the NINTENDO SWITCH mark and adds the term “rls.” The domain name also adds the “.club” generic top-level domain (“gTLD”) to Complainant’s mark. The addition of a generic term and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore holds that the <switchrls.club> domain name is confusingly similar to the NINTENDO SWITCH mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <switchrls.club> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent has no rights or legitimate interests in the <switchrls.club> domain name as Respondent is not commonly known by the domain name and Complainant has not licensed or authorized Respondent to use the NINTENDO SWITCH mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <switchrls.club> domain names lists the registrant as “Elsa D. Sarramian Ontalba,” and there is no other evidence to suggest that Respondent was authorized to use the NINTENDO SWITCH mark. Therefore, the Panel holds that Respondent is not commonly known by the <switchrls.club> domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to use the <switchrls.club> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends instead that the <switchrls.club> domain name resolves to a website that offers illegal copies of Complainant’s games. Such use is not a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Nintendo of America Inc. v. Newell, FA 1830487 (Forum Mar. 18, 2019) (holding that respondent lacked rights or a legitimate interest in its domain under the Policy where it used the domain to reference complainant and its offerings and advertise for download free pirated versions of complainant’s games); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided evidence that the <switchrls.club> domain name resolves to a website that features Complainant’s logos and characters while promoting users to download pirated versions of Complainant’s games. Therefore, the Panel holds that Respondent does not use the <switchrls.club> domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent’s use of the <switchrls.club> domain name to compete with Complainant’s business demonstrates that Respondent registered and uses the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See NIHC, INC. and NORDSTROM, INC. v. Jonathan Shekleton, FA 1852259 (Forum Aug. 18, 2019) (“Disrupting a complainant’s business and diverting users to a disputed domain name that sells counterfeit goods evinces bad faith under Policy ¶¶ 4(b)(iii) and (iv)”). Complainant has shown that the <switchrls.club> domain name resolves to a website that features Complainant’s logos and characters while promoting users to download pirated versions of Complainant’s games, enabling users to avoid buying legitimate copies of Complainant’s games. Moreover, Complainant argues that the website gives the false impression that it is affiliated with, and authorized by Complainant. The Panel agrees. The Panel therefore holds that Respondent registered and uses the <switchrls.club> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also asserts that Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH mark at the time of registration of the <switchrls.club> domain name based on Respondent’s use of the mark in connection with offering pirated copies of Complainant’s games. Actual knowledge of Complainant’s mark prior to registering the domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees that Respondent’s use of the <switchrls.club> domain name to feature Complainant’s logos and characters while promoting users to download pirated versions of Complainant’s games shows Respondent had actual knowledge of Complainant’s trademark rights prior to registration. Thus, Respondent registered and uses the <switchrls.club> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchrls.club> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 16, 2020
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