Nintendo of America Inc. v. Matthew Johnson
Claim Number: FA1908001857371
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is Matthew Johnson (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pokemonswordandshield.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
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 August 14, 2019; the Forum received payment on August 14, 2019.
On August 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pokemonswordandshield.com> domain name 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 August 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2019 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@pokemonswordandshield.com. Also on August 16, 2019, 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 September 6, 2019 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 summarized as follows:
The Complainant is the owner of the trademark POKÉMON registered, inter alia, in the USA for video games since 1999. The Complainant’s next set of video games Pokémon Sword and Pokémon Shield are set to be released in November 2019 and were announced in February 2019. It owns pokemonsword.com, pokemonshield.com and pokemonswordshield.com.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s POKÉMON mark adding only ‘Sword and shield’ referring to the Complainant’s upcoming games and the gTLD “.com” which do not prevent such confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and has not been authorized by the Complainant.
The Domain Name has been pointed to adult content and has been offered for sale for US$1400. Pointing a Domain Name to adult content does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Offering a domain for sale is also evidence of a lack of rights or legitimate interests in a domain name.
Using the title of the Complainant’s upcoming video games shows actual knowledge on the part of the Respondent about the Complainant and its business.
Diverting Internet users to adult content using a complainant’s mark in a domain name is registration and use in bad faith under 4(b)(iii) of the Policy.
Offering a domain name for sale is further evidence of bad faith under Policy 4(b)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trademark POKÉMON registered, inter alia, in the USA for video games since 1999. The Complainant’s next set of video games Pokémon Sword and Pokémon Shield are set to be released in November 2019 and were announced in February 2019. It owns pokemonsword.com, pokemonshield.com and pokemonswordshield.com.
The Domain Name registered in 2019 has been pointed to adult content and has been offered for sale for US$1400.
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 in this Complaint combines the Complainant’s POKÉMON mark (registered, inter alia, in the USA for video games from 2019), ‘sword and shield’ and the gTLD “.com.”
The addition of ‘sword and shield’ does not serve to distinguish the Domain Name from the Complainant’s mark that is still recognizable in the 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)).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. 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 finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
The Respondent has not provided any evidence that it is commonly known by the Domain Name. The Complainant has not authorised the Respondent to use the Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate non-commercial use.
The use of a domain name containing a well-known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017).
A general offer to sell a disputed domain name can be evidence of a lack or rights or legitimate interest in a disputed domain name per Policy 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
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 reference by the Respondent to the name of the Complainant’s upcoming video games shows that the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name.
Use of a domain name containing a trademark in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy 4 (b)(iii). See Molson Canada 2005 v. JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb. 10, 2015). The fact that the Respondent’s web site looks different to the Complainant is not relevant where a complainant’s trademark has been used for adult content.
A general offer to sell a disputed domain name for more than out-of-pocket costs can demonstrate bad faith registration per Policy 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith 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 <pokemonswordandshield.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 7, 2019
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