Nintendo of America Inc. v. JACK LAVOIRE
Claim Number: FA2001001878557
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, United States. Respondent is JACK LAVOIRE (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nintendoswitch-shop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 14, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <nintendoswitch-shop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@nintendoswitch-shop.com. Also on January 14, 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 February 4, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant owns, inter alia, the mark NINTENDO registered in the USA for video game related goods and services and used since at least 1988 and the mark NINTENDO SWITCH registered in the USA for the same goods and services and used since 2016.
The Domain Name, registered in 2019, is confusingly similar to the Complainant’s marks containing NINTENDO SWITCH in its entirety adding only a hyphen, the generic term “shop” and the gTLD “.com” which does not prevent such confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and is not authorised by the Complainant.
The Domain Name has been used to operate a website masquerading as an official NINTENDO site purporting to sell discounted products of the Complainant and using the mark NINTENDO SWITCH and the official Nintendo Switch logo at the top of the site and containing a notice ‘SWITCH-NINTENDO © 2019 created by Nintendo’. This is not a bona fide offering of goods or services or a non commercial legitimate or fair use. It is registration and use in bad faith. The Respondent has knowledge of the Complainant purporting to sell the Complainant’s products, imitating the Complainant to confuse customers for commercial gain and disrupting the business of the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns, inter alia, the mark NINTENDO registered in the USA for video game related goods and services and used since at least 1988 and the mark NINTENDO SWITCH registered in the USA for the same goods and services and used since 2016.
The Domain Name registered in 2019 has been used for a site which represents that it is an official site of the Complainant.
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”).
Identical and/or Confusingly Similar
The Domain Name consists of the Complainant’s NINTENDO SWITCH mark (registered in the USA for video game related goods and services and used since 2016, the NINTENDO mark having been used since at least 1987), a hyphen, the generic word “shop” and the gTLD “.com.”
The addition of the generic word “shop” to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Nor does the addition of a hyphen. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4 (a)(i).)
The gTLD “.com” does not serve to distinguish the Domain Name from the NINTENDO SWITCH mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The site is commercial so cannot be legitimate non commercial fair use.
The Respondent has used the site attached to the Domain Name for a competing retail site not connected with the Complainant, but using the Complainant’s word marks and its official registered Nintendo Switch logo mark and said to be ‘created by Nintendo’. It does not make it clear that there is no commercial connection between the site and the Complainant.The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s well known mark and use it for a site which presents itself as an official retail site of the Complainant.
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to point to competing dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use).
Use to point to a site that purports to sell the Complainant’s products and using the Complainant’s marks and its official Nintendo Switch logo shows that the Respondent is aware of the Complainant, its rights, business and services.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nintendoswitch-shop.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 5, 2020
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