Nintendo of America Inc. v. Nelly Querecuto / Nelly / franyer rivas / AK Marketing
Claim Number: FA2012001924387
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Nelly Querecuto / Nelly / franyer rivas / AK Marketing (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <switchxci.org> and <3dsiso.org>, registered with Name.com, Inc..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2020; the Forum received payment on December 9, 2020.
On December 10, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <switchxci.org> and <3dsiso.org> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 December 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2021 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@switchxci.org, postmaster@3dsiso.org. Also on December 16, 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 January 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <switchxci.org> and <3dsiso.org> domain names are confusingly similar to Complainant’s NINTENDO SWITCH and NINTENDO 3DS marks.
2. Respondent does not have any rights or legitimate interests in the <switchxci.org> and <3dsiso.org> domain names.
3. Respondent registered and uses the <switchxci.org> and <3dsiso.org> domain names in bad faith.
B. Respondent did not file a Response.
Complainant, Nintendo of America, Inc., markets and distributes video games systems, software, and related products. Complainant holds a registration for the NINTENDO SWITCH and NINTENDO 3DS marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,477,313, registered May 22, 2018, and Reg. No. 4,150,759, registered May 29, 2012).
Respondent registered the <3dsiso.org> domain name on March 17, 2020 and the <switchxci.org> domain name on July 28, 2020, and uses them to sell pirated versions of Complainant’s products.
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”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are controlled by the same person and/or entity, operating under several aliases. 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.” Complainant provides evidence that that the disputed domain names use the same contact phone number for the registrant, were registered using the same registrar, host, and IP address, and resolve to websites featuring pirated versions of Complainant’s products and content, with nearly identical layouts.
The Panel finds that this evidence is sufficient to demonstrate that the disputed domain names are jointly controlled, and will refer to the singular Respondent throughout this Decision.
The Panel finds that Complainant has rights in the NINTENDO SWITCH and NINTENDO 3DS marks based upon registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <switchxci.org> and <3dsiso.org> domain names each incorporate the distinctive portion of one of Complainant’s marks, and simply add either the letters “xci” or “iso,” and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD to a mark is insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <switchxci.org> and <3dsiso.org> domain names are confusingly similar to Complainant’s NINTENDO SWITCH and NINTENDO 3DS marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent does not have rights or legitimate interests in the <switchxci.org> and <3dsiso.org> domain names, as Respondent is not commonly known by the domain names. Respondent is not licensed or authorized to use Complainant’s NINTENDO SWITCH or NINTENDO 3DS marks. The WHOIS information of record notes “Nelly Querecuto / Nelly / franyer rivas / AK Marketing.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant also contends that Respondent doesn’t use the <switchxci.org> and <3dsiso.org> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead uses the domains to offer pirated versions of Complainant’s products for sale. The use of a disputed domain name to offer unauthorized or counterfeit versions of a complainant’s products for sale is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots from the websites resolving form the disputed domain names, showing that Respondent uses Complainant’s marks and images to market and distribute pirated copies of Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <switchxci.org> and <3dsiso.org> domain names in bad faith because Respondent disrupts Complainant’s business by offering pirated versions of its products for sale. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). The Panel finds that Respondent’s illegal activity at the disputed domain names is itself further of bad faith under Policy ¶ 4(b)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH or NINTENDO 3DS marks as shown through the use of Complainant’s logos, marks, and information on Respondent’s website. Actual knowledge of a complainant’s rights in a mark can be shown through Respondent’s use of that mark and Complainant’s information in connection with the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the NINTENDO SWITCH or NINTENDO 3DS marks, establishing further bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchxci.org> and <3dsiso.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 11, 2021
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