Nintendo of America Inc. v. Zlatan Irving
Claim Number: FA1912001874578
Complainant is Nintendo of America Inc. ("Complainant"), represented by William C. Rava, Washington, USA. Respondent is Zlatan Irving ("Respondent"), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nintendo-de.com> and <nitendo-de.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 December 10, 2019; the Forum received payment on December 10, 2019.
On December 11, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <nintendo-de.com> and <nitendo-de.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 December 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 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@nintendo-de.com, postmaster@nitendo-de.com. Also on December 12, 2019, 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 January 6, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has marketed and distributed video game systems, software, and related products since the late 1980s under the NINTENDO mark. Complainant owns multiple trademark registrations for NINTENDO in the United States and other jurisdictions, and claims that its brand is famous worldwide.
Respondent registered the disputed domain names <nintendo-de.com> and <nitendo-de.com> in November 2019. Complainant states that one of its business associates recently received a fraudulent email from an account associated with the <nintendo-de.com> domain name, impersonating one of Complainant's employees and requesting payment. Complainant notes that Respondent was involved in a previous proceeding under the Policy, Hitachi Ltd. v. Zlatan Irving, No. 102466 (Czech Arb. Ct. July 14, 2019), in which Respondent was found to have engaged in similar conduct involving impersonation and email fraud. Complainant states that Respondent is not affiliated with or authorized by Complainant.
Complainant contends on the above grounds that each of the disputed domain names <nintendo-de.com> and <nitendo-de.com> is confusingly similar to its NINTENDO mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are 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").
The
disputed domain name <nintendo-de.com> incorporates Complainant's
registered NINTENDO trademark, adding a hyphen, the geographic abbreviation
"DE," and the ".com" top-level domain. The other disputed
domain name, <nitendo-de.com>, does the same, but omits one letter
"N" from the NINTENDO mark. These alterations do not substantially
diminish the similarity between the domain names and Complainant's mark. See,
e.g., Nintendo of America Inc. v. Adrienne Joiner, FA 1816084 (Forum Dec. 11, 2018) (finding
<nintendousa.com> confusingly similar to NINTENDO); Haribo GmbH &
Co. KG v. Whois Agent, Domain Protection Services, Inc. / Louane Severins,
D2018-1975 (WIPO Nov. 12, 2018) (finding <haribo-de.com> confusingly
similar to HARIBO). The Panel considers the disputed domain names 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 names, 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 names incorporate Complainant's registered mark or a typographical variation thereof without authorization, and the only apparent use has been to impersonate one of Complainant's employees in connection with a fraudulent scheme. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Aon Corp. v. Alison Boudreaux, FA 1851227 (Forum Aug. 15, 2019) (finding lack of rights or interests in similar circumstances); Haynes & Boone, LLP v. Robert Chuks, FA 1840446 (Forum May 23, 2019) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, 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 names.
Finally, Complainant must show that the disputed domain names were registered and are 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."
Respondent registered domain names obviously intended to create confusion with Complainant and its marks, and is using one or both of them to impersonate Complainant in connection with a fraudulent scheme. Such conduct is indicative of bad faith under the Policy. See, e.g., Aon Corp. v. Alison Boudreaux, supra (finding bad faith registration and use in similar circumstances); Haynes & Boone, LLP v. Robert Chuks, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nintendo-de.com> and <nitendo-de.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 13, 2020
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