Nintendo of America Inc. v. Khaled Kerkeb / Host Master / 1337 Services LLC
Claim Number: FA2107001956930
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Khaled Kerkeb / Host Master / 1337 Services LLC (“Respondent”), Algeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <switchnsz.com>, <switch-xci.xyz>, <switch2u.com>, <switch-xci.online>, <switch-xci.org>, and <switch-xci.site>, registered with Tucows Domains Inc..; Ligne Web Services Sarl Dba Lws.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2021; the Forum received payment on July 27, 2021.
On July 28, 2021; July 29, 2021, Tucows Domains Inc..; Ligne Web Services Sarl Dba Lws confirmed by e-mail to the Forum that the <switchnsz.com>, <switch-xci.xyz>, <switch-xci.online>, <switch-xci.org>, <switch-xci.site>, <switch2u.com> domain names are registered with Tucows Domains Inc..; Ligne Web Services Sarl Dba Lws and that Respondent is the current registrant of the names. Tucows Domains Inc..; Ligne Web Services Sarl Dba Lws has verified that Respondent is bound by the Tucows Domains Inc..; Ligne Web Services Sarl Dba Lws 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 August 4, 2021, the Forum served the Complaint and all Annexes, including an English and French language Written Notice of the Complaint, setting a deadline of August 24, 2021 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@switchnsz.com, postmaster@switch-xci.xyz, postmaster@switch-xci.online, postmaster@switch-xci.org, postmaster@switch-xci.site, postmaster@switch2u.com. Also on August 4, 2021, the English and French language 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; it was sent also in French for the domain names for which the language of the registration agreement is French.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 26 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, there are two Respondents: the registrant of the domain names <switch-xci.online>, <switch-xci.org>, <switch-xci.site> is Khaled Kerbeb; the registrant of the domain names <switchnsz.com>, <switch-xci.xyz>, <switch2u.com> is Host Master, 1337 Services LLC. Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support, Complainant provides evidence showing that five of the disputed domains redirected to the same website located at <nsw2u.xyz> which distributes pirated copies of Complainant’s products. The other disputed domain name, <switchnsz.com>, redirects to a similar website (<nswrom.com>) which distributes the same content as <nsw2u.xyz>, using the same images to promote that content.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the disputed domain names are under common control as they resolve to websites that use the same images to promote pirated versions of Complainant’s products. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all three contested domain names, and the three registrants are collectively referred to as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The registration agreement for the domain names <switchnsz.com>, <switch-xci.xyz>, <switch2u.com> is in the English language, thereby making the langue of the proceedings English, for these domain names.
However, the registration agreement for the domain names <switch-xci.online>, <switch-xci.org>, <switch-xci.site> is in the French language, thereby making the langue of the proceedings French, for these domain names.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, the resolving websites for all of the disputed domain names are in English, thus Respondent is familiar with the English language. Respondent has received the Notification in French for the domain names <switch-xci.online>, <switch-xci.org>, <switch-xci.site> and has chosen not to respond to the Complaint. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English for all of the disputed domain names. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it markets and distributes video games systems, software, and related products. Complainant has rights in the NINTENDO SWITCH mark based upon its registration in Mexico in 2017. The mark is also registered elsewhere around the world. Complainant has common law rights in the SWITCH mark dating back to 2017.
Complainant alleges that the disputed domain names are confusingly similar to its marks because they incorporate the dominant portion of the NINTENDO SWITCH mark, as well as the entirety of the SWITCH mark, merely adding the descriptive terms “nsz,” “xci,” (which refer to the file types of the pirated products offered at the disputed domains), or “2u” (which stands for “to you”), as well as a generic top-level domain (“gTLD”).
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s marks and is not commonly known by the disputed domain names. Additionally, Respondent doesn’t use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to market and sell pirated copies of Complainant’s products.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business by enabling consumers to obtain unauthorized versions of Complainant’s products. Respondent also makes an illegal use of the disputed domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH mark when the disputed domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the marks NINTENDO SWITCH and SWITCH and uses them to market video games and related products and services. The marks are famous.
Complainant’s rights in its marks date back to 2017.
The disputed domain names were registered in 2019 and 2020.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites offer pirated versions of Complainant’s products, and display advertising links.
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 has registered trademark rights in the NINTENDO SWITCH mark. Complainant also claims common law rights in the SWITCH mark based upon longstanding use and recognition and provides evidence that secondary meaning has been established from Complainant’s sales under the mark, media recognition, advertisement expenditures, and consumer surveys. Registration of a mark is unnecessary where common law rights can be established per Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”); see also Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Nintendo of America Inc. v. Host Master / 1337 Services LLC, FA1917151 (Forum Nov. 17, 2020) (transferring domain; finding Nintendo owns common law rights to the SWITCH mark); see also Nintendo of America Inc. v. Dajana Shawn, FA1798791(Forum Sept. 4, 2018) (evidence of sales and media references “fully supports Complainant’s claim of common law rights in the standalone SWITCH mark, and it is clear from this evidence that these rights arose almost immediately after the product was launched in March 2017, if not even before then.”). Thus, the Panel finds that that Complainant has common law rights in the SWITCH mark per Policy ¶ 4(a)(i).
The disputed domain names incorporate the dominant portion of the NINTENDO SWITCH mark, as well as the entirety of the SWITCH mark, merely adding hyphens, the descriptive terms “nsz,” “xci,” (which refer to the file types of the pirated products offered at the disputed domains), or “2u” (which stands for “to you”), as well as a generic top-level domain (“gTLD”). Addition of hyphens, descriptive terms, and/or letters and numerals, and a gTLD is insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); .”); see also Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. chen jia jin(143434) / chen jia jin, FA1904001840410 (Forum May 24, 2019)(finding that brooksos.com was confusingly similar to the BROOKS mark). Thus the Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of record notes “Khaled Kerkeb / Host Master, 1337 Services LLC” as the registrant of the disputed domain names. Thus the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names to offer pirated copies of Complainant’s products. Use of a disputed domain name for illegal purposes does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant). Therefore, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent disrupts Complainant’s business by illegally offering pirated versions of Complainant’s goods at the resolving webpages, together with advertising links, presumably for commercial gain. This is evidence of bad faith under Policy ¶¶¶ 4(a)(iii), 4(b)(iii), and 4(b)(iv). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also SAAVN, LLC. v. David Dhawan, FA1519621 (Forum Nov. 5, 2013) (finding bad faith use and registration because respondent’s websites provided free, illegal downloads, of music in direct competition with complainant’s music business); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds bad faith registration and use under Policy ¶¶¶ 4(a)(iii), 4(b)(iii), and 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s marks: the resolving websites refer to Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has engaged in a pattern of bad faith registration and use of disputed domain names: as noted above, it registered and used in bad faith the six domain names that are the subject of the instant proceedings. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchnsz.com>, <switch-xci.xyz>, <switch-xci.online>, <switch-xci.org>, <switch-xci.site>, and <switch2u.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 26, 2021
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