Nintendo of America Inc. v. Heidi K. Bain
Claim Number: FA2001001879970
Complainant is Nintendo of America Inc. ("Complainant"), represented by Christian Marcelo of Perkins Coie LLP, Washington, United States. Respondent is Heidi K. Bain ("Respondent"), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mod3dscard.com>, registered with NameSilo, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2020; the Forum received payment on January 21, 2020.
On January 22, 2020, NameSilo, LLC confirmed by email to the Forum that the <mod3dscard.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@mod3dscard.com. Also on January 23, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is a leading developer of video game systems, software, and related products. Complainant launched the Nintendo 3DS video game system in 2011, followed by various successors in the 3DS series, with total sales of more than 380 million units. Complainant owns numerous trademark registrations for NINTENDO 3DS in jurisdictions around the world. Complainant also uses 3DS to identify the Nintendo 3DS system, and media outlets worldwide use 3DS in a similar fashion. Complainant provides evidence of such media recognition, along with Google search results demonstrating a search for "3DS" returns almost exclusively websites associated with Complainant's 3DS series.
Respondent registered the disputed domain name <mod3dscard.com> via a privacy registration service in November 2017. Complainant alleges that the domain name is being used for a website that offers to sell illegal game copiers (also known as "flashcards" or "flashcarts") and promotes piracy of Complainant's content. The screenshots provided by Complainant indicate that the website also promotes products related to video game systems other than Complainant's 3DS series.
Complainant contends on the above grounds that the disputed domain name <mod3dscard.com> is confusingly similar to its 3DS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant owns rights in the NINTENDO 3DS mark by virtue of numerous trademark registrations, and asserts common law rights in 3DS. Complainant supports its claim of rights in 3DS with evidence of widespread public recognition, and this claim has been accepted in several previous proceedings under the Policy. See, e.g., Nintendo of America Inc. v. Allen Newell, FA 1830487 (Forum Mar. 18, 2019); Nintendo of America Inc. v. Rui Ai, FA 1766615 (Forum Feb. 17, 2018); Nintendo of America Inc. v. Zhiqing Yu / Savane Thaline / Elic / Xiongjie Wu, FA 1748769 (Forum Oct. 30, 2017); Nintendo of America Inc. v. Alex Wang / Jason Alex / Dituokeji / Tony Lin / Chuck Chen / Digitopz Technology / Chuck Liu, FA 1721638 (Forum May 3, 2017). The Panel finds that Complainant has established common law trademark rights in 3DS.
The disputed domain name <mod3dscard.com> incorporates Complainant's 3DS mark, adding the generic terms "mod" and "card" (both of which relate to Complainant's products), and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Nintendo of America Inc. v. Allen Newell, supra (finding <3ds-flashcard.cc> confusingly similar to 3DS); Microsoft Corp. v. Rich Eppley, FA 1319694 (Forum June 2, 2010) (finding <xboxcontrollermod.com> confusingly similar to XBOX). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Respondent is using the disputed domain name to promote products that unlawfully promote piracy of Complainant's content, along with products related to video game systems other than Complainant's 3DS series. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Nintendo of America Inc. v. Allen Newell, supra (finding lack of rights or interests arising from website offering illegal copies of Complainant's games); Nintendo of America Inc. v. Rui Ai, supra (finding lack of rights or interests arising from website offering devices enabling unlawful copying and use of Complainant's games); Bulgari S.p.A. v. Angie Leblanc, FA 1872070 (Forum Dec. 19, 2019) (finding lack of rights or interests where domain name incorporating trademark was used to promote products other than the trademarked goods or services).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name incorporates Complainant's registered mark without authorization, and Respondent is using the domain name to promote unlawful piracy of Complainant's content. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Nintendo of America Inc. v. Allen Newell, supra (finding bad faith registration and use based upon use of domain name incorporating 3DS mark for website offering illegal copies of Complainant's games); Nintendo of America Inc. v. Rui Ai, supra (finding bad faith registration and use based upon use of domain names incorporating 3DS mark for website offering devices enabling unlawful copying and use of Complainant's games).
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mod3dscard.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 15, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page