Nintendo of America Inc. v. Host Master / 1337 Services LLC
Claim Number: FA2010001917151
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, United States. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <switch-xci.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2020; the Forum received payment on October 15, 2020.
On October 16, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <switch-xci.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@switch-xci.com. Also on October 19, 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 November 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide distributer of video game systems, including the product known as Nintendo Switch, which was launched in March of 2017.
Both public media and consumers commonly refer to Switch consoles and games simply as “Switch” and “Switch games.”
A Google search of “Switch” returns a first page of results almost exclusively related to Complainant and/or its “Switch” products.
As a consequence, Complainant has established rights in the SWITCH trademark under the common law, dating from early 2017.
Respondent registered the domain name <switch-xci.com> on or about November 6, 2018.
The domain name contains the three-letter combination “xci,” which refers to a type of computer file that contains the contents of a Switch game card in a designated format.
The domain name is confusingly similar to Complainant’s SWITCH mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the SWITCH mark in any way.
Respondent fails to make a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of the domain name.
Instead, Respondent uses the domain name to attempt to sell pirated and illegal copies of Complainant’s products online.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the SWITCH marks when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has not obtained a registration for the mark SWITCH. However, registration of a mark with a competent trademark authority is not the only means by which Complainant may satisfy the requirement of Policy ¶ 4(a)(i) that it show that it has standing to pursue its Complaint under the Policy. This is because rights in a mark secured under the common law will also suffice for this purpose. See, for example, loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018):
Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the … marks [for purposes of demonstrating standing under Policy ¶ 4(a)(i)].
In support of claim of common law rights in the SWITCH mark, Complainant submits that:
a. since its release in March 0of 2017, Complainant has sold more than 50 million Switch consoles and more than 300 million games for the Switch system;
b. both public media and consumers commonly refer to Switch consoles and games simply as “Switch” and “Switch games;”
c. a Google search of “Switch” returns a first page of results almost exclusively related to Complainant and/or its “Switch” products; and
d. as a consequence, Complainant has established rights in the SWITCH trademark under the common law, dating from early 2017.
In light of these uncontested contentions, we conclude that Complainant has made a satisfactory showing of secondary meaning in its SWITCH mark, and, therefore, of standing to pursue its Complaint in this proceeding.
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saint Kitts and Nevis). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017), sec. 1.3:
[T]he fact that secondary meaning may exist only in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <switch-xci.com> domain name is confusingly similar to Complainant’s SWITCH trademark. The domain name incorporates the mark in its entirety, with only the addition of a hyphen and the three-letter combination “xci,” which refers to a type of computer file containing the contents of a Switch game card in a designated format, plus the generic Top-Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
And, as to Respondent’s addition of a hyphen to Complainant’s mark in creating its domain name, hyphens are of no consequence to our analysis because a hyphen adds nothing of consequence to the meaning, nor does it change the phonetic character, of the result.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <switch-xci.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <switch-xci.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SWITCH mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Host Master / 1337 Services LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <switch-xci.com> domain name to attempt to sell pirated and illegal copies of Complainant’s products online. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Spotify AB v. Haji Pacman, FA1701001713362 (Forum February 21, 2017) (finding lack of rights or legitimate interests in a contested domain name based upon evidence of a respondent’s use of the domain name to market online counterfeit audio streaming services purporting to be those of a UDRP complainant whose mark was incorporated in the domain name).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <switch-xci.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017):
Respondent’s primary offering seem to be counterfeits of Complainant’s … products. Respondent’s use of the … domain name is thus disruptive to Complainant’s business [and thus demonstrates respondent’s bad faith in registering and using the domain name] per Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the SWITCH trademark when it registered the <switch-xci.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a complainant’s mark at the time the UDRP respondent registered a confusingly similar domain name, and therefore its bad faith in registering it] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <switch-xci.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 17, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page