Nintendo of America Inc. v. Domain Admin / TLV, LLC
Claim Number: FA2002001882149
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Domain Admin / TLV, LLC (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--pokmon-dva.com> (the “disputed domain name”), registered with Dynadot Llc; Dynadot, 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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2020; the Forum received payment on February 4, 2020.
On February 7, 2020, Dynadot Llc; Dynadot, LLC confirmed by e-mail to the Forum that the <xn--pokmon-dva.com> disputed domain name is registered with Dynadot Llc; Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot Llc; Dynadot, LLC has verified that Respondent is bound by the Dynadot Llc; Dynadot, 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 February 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@xn-pokmon-dva.com. Also on February 13, 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 March 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant promotes and offers for sale video game systems, software, and related products. Complainant has rights in the POKÉMON trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., U.S. Reg. No. 2,265,698, registered July 27, 1999) (hereinafter referred to as the POKÉMON Mark”). The disputed domain name is confusingly similar to the POKÉMON mark as the disputed domain name is comprised entirely of the mark and uses a Punycode Internationalized Domain Name (“IDN”).
Respondent has no rights or legitimate interests in the <xn--pokmon-dva.com> disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the POKÉMON Mark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a parked webpage that provides click-through links related to Complainant’s mark.
Respondent registered and uses the <xn--pokmon-dva.com> domain name in bad faith as the disputed domain name resolves to a parked webpage that provides click-through links related to Complainant’s mark. Respondent also attempts to distribute malware to Internet users arriving at the website to which the disputed domain name resolved. Finally, Respondent had actual knowledge of Complainant’s rights in the POKÉMON mark prior to the registration of the disputed domain name through the longstanding use and fame of the POKÉMON Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the POKÉMON Mark. The Disputed Domain Name is confusingly similar to Complainant’s POKÉMON Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name 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 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”).
The Panel concludes that Complainant has shown to have rights in the POKÉMON Mark based upon registration of the POKÉMON Mark with the United States Patent and Trademark Office (“USPTO”), as referenced above. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel also concludes that the disputed domain name is confusingly similar to the POKÉMON Mark under the Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s POKÉMON Mark in its entirety, with the addition of the geographical or descriptive term “pasdaran”, followed by the generic Top-Level Domain (“gTLD”) “.com. The disputed domain name is an IDN using Punycode and the translated disputed domain name is <Pokémon.com>. Translated IDNs are considered for purposes of confusing similarity analysis. See Chronicle Security Ireland Limited v. Milen Radumilo, FA1867326 (Forum Dec. 3, 2019) (collecting cases finding that translated IDNs are considered for purposes of confusing similarity analysis).
Here, the disputed domain name is an IDN using Punycode (xn-pokemon-dva.com) and the translated domain name is <Pokémon.com>. This disputed domain name is confusingly similar to the POKÉMON Mark as it is comprised entirely and only of the POKÉMON Mark.
Moreover, additions of a geographic and/or descriptive term and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and a trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the Disputed Domain Name, nor has Complainant authorized Respondent to use the POKÉMON Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is hosting third party hyperlinks, which the Panel finds is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent is attempting to attract Internet users for commercial gain by hosting hyperlinks to products or services on a pay-per-click basis. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Use of a disputed domain name to resolve to a webpage that offers links related to a complainant’s mark may be evidence of bad faith per Policy ¶ 4(b)(iv). See State Farm Mutual Automobile Insurance, FA1878031 (Forum Jan. 31, 2020) (finding bad faith use where disputed domain resolved to a parked website providing click-through links).
Third, Respondent attempts to download malware on the website to which the disputed domain name resolved. Use of a disputed domain name to distribute malware may be evidence of bad faith per Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Here, Complainant has provided the Panel with a screenshot that shows malware being attempted to be downloaded onto Internet users’ devices. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith for that reason as well, per Policy ¶ 4(a)(iii).
Finally, the Panel finds that Respondent knew or should have known of Complainant’s rights in its Mark when registering the Disputed Domain Name. As noted above, the Complainant’s POKÉMON Mark is widely known. Respondent registered the disputed domain name years after the Complainant first obtained its trademark registrations for the POKÉMON Mark. It therefore strains credulity to believe that Respondent had not known of Complainant or its POKÉMON Mark when registering the disputed domain name, especially since the disputed domain name incorporates the entirety of the Complainant’s POKÉMON Mark. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the POKÉMON Mark prior to registering the disputed domain name, constituting bad faith under the Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--pokmon-dva.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: March 14, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page