DECISION

 

Nintendo of America Inc. v. Reynaldo Anthony / GNExtreme

Claim Number: FA2002001886250

 

PARTIES

Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, United States.  Respondent is Reynaldo Anthony / GNExtreme (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <switchiso.org>, registered with NameCheap, Inc.

 

PANEL

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 28, 2020; the Forum received payment on February 28, 2020.

 

On March 2, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <switchiso.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@switchiso.org.  Also on March 4, 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. Respondent did however exchange e-mails with the Forum, see below.

 

On March 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it develops, produces, markets and distributes video game systems including the Nintendo Switch game console. Complainant’s products—including consoles and video games—have achieved widespread popularity and have made the Nintendo brand famous throughout the world. Complainant marketed its first video game system, the Nintendo Entertainment System, in 1985. Complainant has since released additional video game systems including the Super Nintendo Entertainment System in 1991, Nintendo 64 in 1996, Nintendo GameCube in 2001, Nintendo DS in 2004, Wii in 2006, Nintendo DSi in 2008, Nintendo 3DS in 2011, Wii U in 2012, and Nintendo Switch in 2017. Nintendo is widely recognized as one of the best-selling video game system developers in the world, and also one of the most famous international companies in the world. Complainant has rights in the NINTENDO SWITCH mark through its trademark registrations various countries, in particular in Mexico in 2017.

 

Complainant alleges that the disputed domain name is confusingly similar to its NINTENDO SWITCH mark as it includes the distinctive portion of the mark and merely adds the descriptive term “iso.”

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s NINTENDO SWITCH mark and is not commonly known by the disputed domain name. Additionally, 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 uses the disputed domain name to sell pirated copies of Complainant’s games. Moreover, the disputed domain name’s resolving website uses Complainant’s copyrighted logos and characters to market these pirated games.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent engages in an illegal activity by selling pirated copies of Complainant’s games. Respondent disrupts Complainant’s business by enabling users to avoid buying legitimate copies of Complainant’s games. Additionally, Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH mark at the time of registration based on Respondent’s use of the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding. The e-mail exchanges between Respondent and the Forum state, in pertinent part:

 

Forum: “The remedy requested by Complainant is transfer of the domain name.”

 

Respondent: “Sure they can take it.”

 

FINDINGS

For the reasons set forth below, the Panel will not make any findings of fact.

 

DISCUSSION

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.

 

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."

 

In the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.

 

See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

Identical and/or Confusingly Similar

For the reasons set forth above, the Panel will not analyze this element of the Policy.

 

Rights or Legitimate Interests

For the reasons set forth above, the Panel will not analyze this element of the Policy.

 

Registration and Use in Bad Faith

For the reasons set forth above, the Panel will not analyze this element of the Policy.

 

DECISION

Given the common request of the Parties, it is Ordered that the <switchiso.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Richard Hill, Panelist

Dated:  March 26, 2020

 

 

 

 

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