Nintendo of America Inc. v. Alex Wang / Jason Alex / DITUOKEJI / TONY LIN / Chuck Chen / Digitopz Technology / CHUCK LIU
Claim Number: FA1703001721638
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is Alex Wang / Jason Alex / DITUOKEJI / TONY LIN / Chuck Chen / Digitopz Technology / CHUCK LIU (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sky3ds.com>, <3ds-cart.com>, <3dsville.com>, <3dstown.com>, <3dsflash.com>, <r4igold3ds.net>, <topsky3ds.com>, and <oz3ds.net>, registered with GoDaddy.com, LLC; and <3dstown.net>, registered with eNom, Inc. (“disputed domain names”)
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.
Sandra J. Franklin, Kendall Reed and Debrett G. Lyons as panelists.
Complainant submitted a Complaint to the Forum electronically on March 14, 2017; the Forum received payment on March 14, 2017.
On March 15, 2017, GoDaddy.com, LLC and eNom, Inc. confirmed by e-mail to the Forum that the <sky3ds.com>, <3ds-cart.com>, <3dsville.com>, <3dstown.com>, <3dstown.net>, <3dsflash.com>, <r4igold3ds.net>, <topsky3ds.com>, and <oz3ds.net> domain names are registered with GoDaddy.com, LLC and eNom, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC and eNom, Inc. have verified that Respondent is bound by the GoDaddy.com, LLC and eNom, Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2017 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@sky3ds.com, postmaster@3ds-cart.com, postmaster@3dsville.com, postmaster@3dstown.com, postmaster@3dstown.net, postmaster@3dsflash.com, postmaster@r4igold3ds.net, postmaster@topsky3ds.com, and postmaster@oz3ds.net. Also on March 22, 2017, 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 April 21, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member panel, the Forum appointed Sandra J. Franklin, Kendall Reed and Debrett G. Lyons (chair) as panelists (the "Panel").
Having reviewed the communications records, 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in 3DS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domains name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells video game systems and related products by reference, inter alia, to the trademarks NINTENDO and NINTENDO 3DS;
2. the trademark, Nintendo 3DS, is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 4,165,097, from June 26, 2012;
3. Complainant has common law trademark rights in 3DS by reason of continuous use since February 2011;
4. the disputed domain names were created on the following dates:
<r4igold3ds.net> on September 4, 2012,
<3dstown.com> on January 31, 2013,
<3ds-cart.com> on September 14, 2013,
<3dsville.com> on October 26, 2013,
<sky3ds.com> on October 21, 2014,
<3dstown.net> on March 17, 2015,
<topsky3ds.com> on May 21, 2015,
<oz3ds.net> on March 30, 2015, and
<3dsflash.com> on November 9, 2015;
5. the disputed domain names resolve to webpages offering counterfeit versions of Complainant’s products and firmware; and
6. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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."
Preliminary Procedural Issue: Multiple Respondents
Paragraph 3(c) of the Rules states that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant alleges that the disputed domain names were registered and are controlled by one person or entity operating under several aliases.
Although the disputed domain names were registered over more than a three-year period, between September 2012 and November 2015, Complainant points to certain commonalities indicating control by a single person or entity.
In particular, Complainant shows that the disputed domain names use one of two unique identifiers in their WHOIS contact information - either the contact email address ‘dthost@163.com’ or the contact number ‘+86.75582801107’ (the domain <sky3ds.com> using both). Otherwise, the WHOIS information shows certain commonalities between groups of the disputed domain names in terms of registrant, street address, and (near identical) IP addresses. Two of the domains, <3dstown.net> and <3dstown.com>, are directly linked to each other. Further, the resolving websites include identical products and payment instructions. Furthermore, the website resolving from <sky3ds.com> links to the resolving websites for all of the other disputed domain names. Finally, the Panel notes that all but one of the disputed domain names are registered with the same Registrar.
Panel finds that Complainant has presented sufficient evidence that, for the purposes of paragraph 3(c) of the Rules, the disputed domain names are controlled by the one entity. Accordingly, in this decision the term “Respondent” is used to refer collectively to the registrants of the disputed domain names.
Substantive Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registration with a national authority provides evidence of trademark rights.[i] Complainant provides evidence of its USPTO registration for NINTENDO 3DS and so it has trademark rights in that term. However, for reasons which follow it is only Complainant’s assertion of common law trademark rights in 3DS which is of interest to the Panel.
Complainant asserts common law trademark rights in 3DS by reason of continuous use dating from the product launch of NINTENDO 3DS marked goods in February 2011.
Trademark rights can arise through use and reputation if there is adequate proof of secondary meaning.[ii] Complainant claims sales of 65 million 3DS marked gaming consoles and over 320 million 3DS marked games since 2011. Complainant also provides evidence that the public and the gaming media commonly shorten Complainant’s trademark, NINTENDO 3DS, to simply “3DS”. Panel is satisfied that Complainant has (common law) trademark rights in 3DS.
Complainant submits that the disputed domain names are confusingly similar to the NINTENDO 3DS and 3DS trademarks. The Panel need only base its reasoning on trademark rights in 3DS. In that regard, it is Complainant’s submission that the disputed domain names add merely generic terms plus a gTLD to the 3DS trademark.
Panel accepts that for the purposes of comparison the general top-level domains (gTLDs), “.com” and “.net”, can generally be disregarded,[iii] as can other matter in the nature of directly descriptive words or non-distinctive elements.[iv]
The disputed domain names make various additions to the 3DS trademark by inclusion of terms such as “sky”, “cart”, “ville”, “top”, “gold”, “flash” and “oz”, or letters and numbers such as “R”, “4” and “i”. In some instances the additions are simple descriptive terms such as (shopping) “cart”, or (flash) “card”, or simple geographical indicators like “oz” (Australia), but in others the references are opaque. The Panel had cause to wonder how, for example, “r4igold”, might be related to (or, more precisely, confusingly similar to) the 3DS trademark.
The Complaint might have been of more assistance to the Panel in this respect. However, basic research made by the Panel showed that to consumers of Complainant’s products, all of the terms have a descriptive meaning or bear some other reference to the goods.[v] As such the additions do not affect the identity of the trademark, which remains the dominant, recognizable element of the disputed domain names.
The Panel is satisfied that all of the disputed domain names are confusingly similar to Complainant’s 3DS trademark and so the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vi]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names.
There is no evidence that Respondent has relevant trademark rights and Complainant has not permitted Respondent to use any of its trademarks.
Complainant provides evidence that the products offered for sale at the websites resolving from the disputed domain names are counterfeit versions of its goods.[vii] Accordingly, there has been no use of the disputed domain names in connection with a bona fide offering of goods, nor any noncommercial or fair use of the disputed domain names. Prior decisions under the Policy have consistently held that sale of counterfeit goods by reference to a complainant’s trademark gives no rights or interests in a disputed domain name incorporating the trademark.[viii]
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the disputed domain names. In the absence of a Response there is nothing on which a claim to rights or interests in the disputed domain names can rest and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In this case the Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. Plainly, the websites exist for commercial gain. The Panel has already found the disputed domain names to be confusingly similar to the trademark. In terms of paragraph 4(b)(iv), the Panel finds that Respondent has intentionally attempted to attract, for gain, internet users to its websites by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of those websites.
Panel finds registration and use in bad faith and the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sky3ds.com>, <3ds-cart.com>, <3dsville.com>, <3dstown.com>, <3dstown.net>, <3dsflash.com>, <r4igold3ds.net>, <topsky3ds.com> and <oz3ds.net> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons (chair),
Sandra J. Franklin and
Kendall Reed
Panelists
Dated: 3 May, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, at paragraph 1.7 (“What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?)
[iii] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iv] See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) finding confusing similarity where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain; see also Gillette Co. v. RFK Assocs., FA 492867 (FORUM July 28, 2005) finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark; see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (FORUM Feb. 18, 2004) finding that hyphens and top-level domains are irrelevant for purposes of the Policy.
[v] R4i Gold appears to be one of the popular R4 series of flash cartridges for the Nintendo DS system. 3DStown.net appears to be an official webstore for such cards. 3DSville.net seems to be a French version of the same, and so forth.
[vi] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[vii] Sworn statement from Dylan Rhoads, software engineer in the employment of Complainant, dated March 27, 2015.
[viii] See, for example, eLuxury.com Inc. v. WangJunJie, FA 1075554 (FORUM Nov. 30, 2007); Keihin Corp. v. Youli Ltd., FA 1106190 (FORUM Dec. 18, 2007); Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (FORUM Aug. 19, 2015).
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