Nintendo of America Inc. v. zhiqing yu / savane thaline / elic / xiongjie wu
Claim Number: FA1709001748769
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is zhiqing yu / savane thaline / elic / xiongjie wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <r43dskarte.com>, <rev3ds.com>, <comprar3dsr4.com>, <r43dsfinland.com>, <r43dsflashkort.com>, <r43dsjogos.com>, <r43dsr4igr.com>, <r43dsspil.com>, and <r4sky3ds.com>, registered with Chengdu Fly-Digital Technology Co., Ltd.; and <r4sdhc3ds.com>, GoDaddy.com, LLC.
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.
Honorable Bruce E. Meyerson (Ret.)
Ho-Hyun Nahm, Esq.
The Hon .Neil Anthony Brown QC (Presiding panelist)
Panelists.
Complainant submitted a Complaint to the Forum electronically on September 13, 2017; the Forum received payment on September 13, 2017.
On September 15, 2017 GoDaddy.com, LLC confirmed by e-mail to the Forum that <r4sdhc3ds.com> is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 17, 2017, Chengdu Fly-Digital Technology Co., Ltd. confirmed by e-mail to the Forum that <r43dskarte.com>, <rev3ds.com>, <comprar3dsr4.com>, <r43dsfinland.com>, <r43dsflashkort.com>, <r43dsjogos.com>, <r43dsr4igr.com>, <r43dsspil.com>, and <r4sky3ds.com> are registered with Chengdu Fly-Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu Fly-Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu Fly-Digital Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On September 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@r43dskarte.com, postmaster@r4sdhc3ds.com, postmaster@rev3ds.com, postmaster@comprar3dsr4.com, postmaster@r43dsfinland.com, postmaster@r43dsflashkort.com, postmaster@r43dsjogos.com, postmaster@r43dsr4igr.com, postmaster@r43dsspil.com, and postmaster@r4sky3ds.com. Also on September 26, 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 October 25, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed
Honorable Bruce E. Meyerson (Ret.), Ho-Hyun Nahm, Esq. and The Hon .Neil Anthony Brown QC ( Presiding panelist) as Panelists.
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.
A. Complainant
Complainant made the following contentions.
Complainant uses the NINTENDO 3DS mark in connection with its 3DS products. Complainant registered the NINTENDO 3DS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,165,097, registered June 26, 2012). See Compl., at Attached Annex 2. Complainant also 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. The 3DS mark has been consistently used in commerce for more than five years and is highly recognized. The 3DS mark is inherently distinctive and fanciful, thereby acquiring a secondary meaning. Respondent’s <r43dskarte.com>, <r4sdhc3ds.com>, <rev3ds.com>, <comprar3dsr4.com>, <r43dsfinland.com>, <r43dsflashkort.com>, <r43dsjogos.com>, <r43dsr4igr.com>, <r43dsspil.com>, and <r4sky3ds.com> are confusingly similar to the NINTENDO 3DS and 3DS marks. All of the disputed domain names incorporate the 3DS mark in its entirety, omitting NINTENDO. The disputed domain names add generic terms (e.g., “sky”, “rev”, “comprar”, “jogos”, “spil”, and “igr”), letters and numbers (“r” and “4”), and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names, and Complainant is not related to Respondent in any manner. Further, Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent uses the domain names primarily for the illegal dissemination of Complainant’s intellectual property. See Compl., Attached Annex 6 (resolving webpages for each domain name).
Respondent has registered and is using the domain names in bad faith. Respondent’s registration of ten infringing domain names indicates a pattern under Policy ¶ 4(b)(ii). Respondent’s use is aimed at disrupting the business of Complainant through competition, and attracting confused Internet users for commercial gain, conduct proscribed by Policy ¶¶ 4(b)(iii) and (iv). Given Respondent’s use and Complainant’s fame, Respondent clearly had actual knowledge of Complainant when registering and using the domain names. Illegal activity also necessitates a finding of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. 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. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese 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.”).
After reviewing the applicable rules regarding the proceedings under the UDRP, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that Respondent is conversant and proficient in the English language. After considering the principles set out above and all the circumstance of the present case, the Panel decides that the proceeding should be in the English language.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has submitted 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. 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.” Complainant contends eight of the domain names are registered to the same individual, Zhiqing Yu. Of those eight domain names, seven list an identical thirteen digit phone number (86.02788223323) and email address (13dsfs@gmail.com) in their WHOIS contact information. Additionally, a ninth domain name (<r43dskarte.com>) also lists this same phone number and email address in its WHOIS contact information. Thus, the <r43dskarte.com> domain name is also allegedly owned or controlled by the same individual, Zhiqing Yu. The tenth domain name, <r4sdhc3ds.com>, currently lists Savane Thaline as the registrant, but uses an identical email address (elicink1@gmail.com) and phone number (86.13084677065) as the <rev3ds.com> domain name, which is currently registered to Zhiqing Yu (but was registered to Savane Thaline using the email address <savanethaline@gmail.com> up until March 28, 2017). See Compl., Attached Annex 5. Complainant maintains that the commonalities between the registrant names, phone numbers, and email addresses is sufficient to prove common ownership of the domain names.
Having regard to all of those considerations and the whole of the evidence, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis. For reasons of convenience, the Respondents will hereafter be referred to as “Respondent”.
1. Complainant is a United States company that is a global developer, marketer, and retailer of video game systems and related products including consoles and video games and it uses the NINTENDO 3DS mark and the 3DS mark in connection with its 3DS products.
2. Complainant registered the NINTENDO 3DS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,165,097, registered June 26, 2012) and has established registered trademark rights in that mark.
3. Complainant has established common law trademark rights in the 3DS mark by reason of continuous use since February 2011.
4. Respondent registered the disputed domain names on the following dates:
<r43dskarte.com> on July 13, 2016;
<r4sdhc3ds.com> on July 29, 2014;
<rev3ds.com> on July 29, 2014;
<comprar3dsr4.com> on July 25, 2016;
<r43dsfinland.com> on August 4, 2016;
<r43dsflashkort.com> on July 21, 2016;
<r43dsjogos.com> on August 18, 2016;
<r43dsr4igr.com> on August 18, 2016;
<r43dsspil.com> on August 4, 2016; and
<r4sky3ds.com> on July 14, 2016.
5. Respondent uses the disputed domain names primarily for the illegal dissemination of Complainant’s intellectual property, offering counterfeit or pirated versions of Complainant’s products or firmware to circumvent Complainant’s copyright protections.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is a global developer, marketer, and retailer of video game systems and related products. Complainant uses the NINTENDO 3DS mark in connection with its 3DS products. Complainant registered the NINTENDO 3DS mark with USPTO (e.g., Reg. No. 4,165,097, registered June 26, 2012). See Amend Compl., at Attached Annex 2. Additionally, Complainant holds registrations for the NINTENDO 3DS mark in countries throughout North and South America, Asia, Africa, and Australia. See Compl., Attached Annex 3. The general consensus among panels is that registrations with USPTO and other government trademark agencies is sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel finds that Complainant’s multiple registrations are sufficient to show rights in the NINTENDO 3DS mark.
Complainant also submits that it has common law rights in the 3DS mark dating back to the product launch and first use in February 2011. The 3DS mark has been consistently used in commerce for more than five years and is highly recognized. The 3DS mark is inherently distinctive and fanciful, thereby acquiring a secondary meaning. “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011). Moreover, “‘[s]econdary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’” AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009). Complainant claims sales of 65 million 3DS marked consoles and over 320 million 3DS games. See Compl., Attached Annex 10 (Games Sales referencing “3DS” platform and sales figures since 2011). Further, the NINTENDO 3DS console is commonly referred to as simply “3DS.” See Compl., at Attached Annex 11 (articles referencing the 3DS console). The Panel therefore finds that Complainant has established common law rights in its 3DS mark through consistent and continuous use of the mark, making the mark distinctive and generating substantial goodwill. See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007).
Complainant is thus in the position where it has shown registered trademark rights in NINTENDO 3DS and common law trademark rights in 3DS.The Panel will follow the approach of the panel in the earlier analogous decision in Nintendo of America Inc. v. Alex Wang / Jason Alex / DITUOKEJI / TONY LIN / Chuck Chen / Digitopz Technology / CHUCK LIU, FORUM Case , Claim Number: FA1703001721638 ( May 3, 2017) as the domain names all include the 3DS mark and the issues concerning all of the domain names may be more conveniently disposed of by reference to that trademark.
The next question that arises, therefore, is whether the disputed domain names are identical or confusingly similar to Complainant’s 3DS mark. Complainant argues Respondent’s <r43dskarte.com>, <r4sdhc3ds.com>, <rev3ds.com>, <comprar3dsr4.com>, <r43dsfinland.com>, <r43dsflashkort.com>, <r43dsjogos.com>, <r43dsr4igr.com>, <r43dsspil.com>, and <r4sky3ds.com> domain names are confusingly similar to the 3DS mark. All of the disputed domain names incorporate the 3DS mark in its entirety, together with some other letters and numbers. The disputed domain names add generic terms (e.g., “sky”, “rev”, “comprar”, “jogos”, “spil”, and “igr”), letters and numbers (“r” and “4”), all of which have relevance to electronic games and in particular Complainant’s games and the “.com” gTLD. The addition of generic terms such as the above and gTLDs is insufficient for the purpose of distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See, e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016).
This is particularly so where the generic expression added is descriptive of the goods and services offered by the complainant. In the present case, Complainant says that the additions to the trademark are “high(ly) descriptive of a feature of the goods (such as “SDHC” standing for “Secure Digital high Capacity”), geographically descriptive (“Finland”) or descriptive of the products sold by the Websites, as discussed below”. In support of those propositions Complainant has adduced in evidence several examples. The Panel has examined the evidence in that regard and concludes that Complainant is correct in submitting that each of the domain names contains, as well as the trademark, a generic word that invokes exactly the goods and services offered by Complainant under the trademark. Indeed, it is true to say that the terminology of each of the domain names has clearly been designed to give to the reader the impression that the domain name relates to the goods and services of Complainant.
Likewise, “[t]he mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).” Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004). Therefore, the Panel finds that confusing similarity exists because the disputed domain names contain Complainant’s entire mark, differing only by the addition of generic terms, top-level domains, and other non-distinguishing stylistic changes. See, e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s 3DS mark and has used it in its entirety in the domain names, adding only the generic terms, top-level domains, and other non-distinguishing stylistic changes referred to above;
(b)Respondent registered the disputed domain names on the following dates
<r43dskarte.com> on July 13, 2016; < r4sdhc3ds.com> on July 29, 2014;
<rev3ds.com> on July 29, 2014; <comprar3dsr4.com> on July 25, 2016;
<r43dsfinland.com> on August 4, 2016; <r43dsflashkort.com> on July 21, 2016;
<r43dsjogos.com> on August 18, 2016; <r43dsr4igr.com> on August 18, 2016;
<r43dsspil.com> on August 4, 2016; and <r4sky3ds.com> on July 14, 2016;
(c)Respondent uses the disputed domain names primarily for the illegal dissemination of Complainant’s intellectual property, offering counterfeit or pirated versions of Complainant’s products or firmware to circumvent Complainant’s copyright protections;
(d)Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant also submits that Respondent has no rights or legitimate interests in the domain names because Respondent is not commonly known by the domain names, and Complainant is not related to Respondent in any manner. WHOIS information associated with this case identifies Respondent as “zhiqing yu / savane thaline / elic / xiongjie wu.” Compl., Attached Annex 1. It has been concluded that a respondent cannot be commonly known by a domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See, e.g., Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [names],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain names] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). The Panel so finds;
(f) Complainant also submits that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent uses the domain names primarily for the illegal dissemination of Complainant’s intellectual property. Complainant provides evidence that the domain names resolve to webpages offering counterfeit or pirated versions of Complainant’s products or firmware to circumvent Complainant’s copyright protections. See Compl., at Attached Annex 6. No rights and legitimate interests may be found when a respondent sells counterfeit versions of a complainant’s products in competition with a complainant’s business. See, e.g., Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007). Hence, the Panel finds that the sale of counterfeit products is evidence that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name pursuant to Policy ¶ 4 (c)(i) or ¶ 4(c)(iii). See, e.g., eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has registered and is using the domain names in bad faith in view of Respondent’s registration of ten infringing domain names which indicates a pattern under Policy ¶ 4(b)(ii). The Respondent’s registration of multiple domain names incorporating variants of the complainant’s mark reflects a pattern of bad faith registration under Policy ¶ 4(b)(ii). See, e.g., Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014). Hence, the Panel finds that Respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See, e.g., Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013).
Secondly, Complainant contends, and the Panel agrees, that Respondent uses the disputed domain names illegally to disrupt Complainant’s business by facilitating Internet piracy and enabling users to avoid purchasing Complainant’s products. Panels have found that a “[r]espondent’s use of the . . . domain names to compete with a [c]omplainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to a [c]omplainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).” Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014); see also Cameron Thomaz P/K/A Wiz Khalifa and Wize Khalifa Trademark, LLC. v. Kyle Lynch, D32014-1525 (WIPO Nov. 4, 2014) (finding bad faith registration and use where respondent’s webpages offered illegal downloads of complainant’s music). Furthermore, the selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion under Policy ¶ 4(b)(iv). See, e.g., H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009). Accordingly, the Panel finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) or (iv), or both.
Thirdly, Complainant argues that Respondent registered the <r43dskarte.com>, <r4sdhc3ds.com>, <rev3ds.com>, <comprar3dsr4.com>, <r43dsfinland.com>, <r43dsflashkort.com>, <r43dsjogos.com>, <r43dsr4igr.com>, <r43dsspil.com>, and <r4sky3ds.com> domain names with actual knowledge of Complainant and its rights to the 3DS mark. Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and notoriety of Complainant's 3DS mark, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that all the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered the domain names, and that it registered and used them in bad faith.
Fourthly, Complainant argues that the disputed domain names are being used for illegal purposes, mainly the sale of pirated and counterfeit products under Complainant’s marks and characters. The Panel agrees. Panels have found bad faith where “[t]he Complainant alleges that the Respondent is using [the] Domain Name for software piracy.” gamigo AG v. Wang Meng, D2011-1659 (WIPO Mar. 17, 2013). Similarly, “the use originally made of the disputed domain name to offer the unauthorized download and installation of the Complainant's . . . software products obviously amounts to a use of the disputed domain name in bad faith.” Autodesk, Inc. v. Milo Kram, D2016-1779 (WIPO Nov. 9, 2016). Therefore, the Panel finds bad faith registration in light of the fact that the Respondent is using the domain names in dispute to sell illegal or counterfeit copies of Complainant’s products. See, e.g., Investors Business Daily Inc., Data Analysis Inc. v. Billy Campbell/Registration Private, Domains by Proxy LLC, D2014-2049 (WIPO Jan. 23, 2015).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the 3DS mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <r43dskarte.com>, <r4sdhc3ds.com>, <rev3ds.com>, <comprar3dsr4.com>, <r43dsfinland.com>, <r43dsflashkort.com>, <r43dsjogos.com>, <r43dsr4igr.com>, <r43dsspil.com>, and <r4sky3ds.com> domain names be TRANSFERRED from Respondent to Complainant.
The Hon. Neil Anthony Brown QC (Chair),
Honorable Bruce E. Meyerson (Ret.) and
Ho-Hyun Nahm, Esq.
Panelists.
October 30, 2017.
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