Nintendo of America Inc. v. Jim Amy / jinqian chen
Claim Number: FA1911001872962
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, United States. Respondent is Jim Amy / jinqian chen (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are the following: <nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz>, <nintendolife.xyz>, and <pokesmon.com>, all registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2019; the Forum received payment on November 25, 2019.
On November 27, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz>, <nintendolife.xyz>, and <pokesmon.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@nintendoonlineshop.xyz, postmaster@nintendobuy.com, postmaster@gonintendo.xyz, postmaster@nintendolife.xyz, postmaster@pokesmon.com. Also on December 2, 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 December 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant markets and distributes video game systems, computer software and related products under the NINTENDO and POKEMON marks.
Complainant holds a registration for the NINTENDO service mark, which is on file
with the United States Patent and Trademark Office (“USPTO”) as Registry No.
3,898,155, registered December 28, 2010, and a registration for the POKEMON
service mark, on file with the USPTO as Registry No. 4,071,285, registered December 13, 2011.
Respondent registered the domain names <nintendoonlineshop.xyz> and <nintendobuy.com> on June 4, 2019, the domain name <gonintendo.xyz> on July 19, 2019, and the domain names nintendolife.xyz> and <pokesmon.com> on October 22, 2019.
Each of the domain names is confusingly similar to one or the other of Complainant’s NINTENDO or POKEMON marks.
Respondent has not been commonly known by any of the domain names.
Complainant has not authorized Respondent to use either the NINTENDO mark or the POKEMON mark in any fashion.
Respondent fails to use any of the domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Instead, Respondent uses the domain names to impersonate Complainant online for its commercial gain by claiming to be official websites in order to defraud unsuspecting customers.
Respondent has no rights to or legitimate interests in any of the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the NINTENDO and POKEMON marks when it registered the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) Each of the domain names registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) Each of the domain names was registered and is being used by Respondent 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:
i. The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. The domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities controlling the domain names here in issue are the same person or entity, operating under several aliases. Complainant specifically asserts as follows:
a. Respondent is using the domain names to operate websites masquerading as official Nintendo websites and purporting to sell Nintendo products, including gaming systems and games;
b. Those websites have the same format and content, claiming to be “Official Site[s]” of Nintendo and making use of Nintendo’s marks, famous characters (for instance, Super Mario and Pikachu) and other intellectual property of Nintendo; and
c. The websites are nearly identical copies of Nintendo’s 2018 holiday website, with certain sections copied verbatim.
Respondent does not contest any of these assertions.
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.” In light of this provision and Complainant’s uncontroverted allegations, we conclude that Complainant may properly prosecute this proceeding against all of the disputed domain names.
Complainant has rights in the NINTENDO and POKEMON service marks by reason of its registration of the marks with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [for its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that all of Respondent’s domain names (<pokesmon.com>,
<nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz> and <nintendolife.xyz>), are confusingly similar to one or the other of Complainant’s NINTENDO or POKEMON marks. Each of the domain names incorporates one of the marks in its entirety, with only the addition of a generic term, three of which, “on line shop,” “go” and “buy,” can be taken to relate to Complainant’s online business model, or, in the case of the domain name incorporating the POKEMON mark, inclusion of a single extraneous letter “s,” plus, in all cases, the addition of a generic Top Level Domain (“gTLD”), either “.com” or “.xyz.” These alterations of the marks, made in creating the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that a respondent failed to differentiate the <aimprofiles.com> domain name from a UDRP complainant’s AIM mark by adding to it the generic term “profiles”).
See also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum August 10, 2015):
Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ ....
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged domain names (<pokesmon.com>, <nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz> and <nintendolife.xyz>), whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <pokesmon.com>,
<nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz> and <nintendolife.xyz> domain names, and that Complainant has not authorized Respondent to use either of the NINTENDO or POKEMON marks in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Jim Amy” or “Jinqian Chen,” neither of which resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <pokesmon.com>, <nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz> and <nintendolife.xyz> domain names to impersonate Complainant online for its commercial gain by claiming to be official websites in order to defraud unsuspecting customers. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Nokia Corp. v. Eagle, FA 1125685 (Forum February 7, 2008) (finding that a respondent’s use of a disputed domain name to pass itself off as a UDRP complainant online to sell unauthorized products of that complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the several contested domain names, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Fitness Int’l, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1623644 (Forum July 9, 2015):
Respondent uses the at-issue domain name to operate a website that purports to offer … services …, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the NINTENDO and POKEMON marks when it registered the disputed domain names. This further demonstrates Respondent’s bad faith in registering them. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and, therefore, Respondent’s bad faith in registering a domain name that was confusingly similar to the mark of a UDRP complainant) through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all of the domain names: <pokesmon.com>,
<nintendoonlineshop.xyz>, <nintendobuy.com>, <gonintendo.xyz> and
<nintendolife.xyz> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 7, 2020
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