Nintendo of America Inc. v. Andrew McFeeters / Alissa Lilian
Claim Number: FA2101001927720
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Andrew McFeeters / Alissa Lilian (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pokemoen.com> and <pokeomeon.com>, registered with Register.com, Inc.; Wild West Domains, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2021; the Forum received payment on January 8, 2021.
On January 12, 2021; January 13, 2021, Register.com, Inc.; Wild West Domains, LLC confirmed by e-mail to the Forum that the <pokemoen.com> and <pokeomeon.com> domain names are registered with Register.com, Inc.; Wild West Domains, LLC and that Respondent is the current registrant of the names. Register.com, Inc.; Wild West Domains, LLC has verified that Respondent is bound by the Register.com, Inc.; Wild West Domains, 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 January 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 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@pokemoen.com, postmaster@pokeomeon.com. Also on January 20, 2021, 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 February 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has submitted that the entities which control the two domain names at issue are effectively controlled by the same person and/or entity, which is 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 contends that the domain names are registered to two entities that share numerous connections that demonstrate they are owned or controlled by the same entity. In that regard, Complainant submits that Common ownership or control of the Disputed Domains is confirmed through phishing e-mails sent using each of the domain names. See Compl., Attached Annex 5. The phishing e-mails use the same name to perpetuate the fraud , namely Korey Lind and the same e-mail address convention, i.e., k.lind@pokemoen.com and k.lind@pokeomeon.com. Both e-mails also have similar content, requesting payment for TPCi, and identical sign-offs and closing the e-mail by stating: “Your swift response is appreciated.” Additionally, both disputed domain names are close misspellings of Nintendo’s official Pokémon website (www.pokemon.com) and were registered within five days of each other. Complainant submits that such evidence is conclusive of common ownership or control. See True Commerce, Inc. v. [REDACTED] / prayers byhis, FA1955292 (Forum Jan. 14, 2021) (finding common ownership where “both domain names are “typographical errors of Complainant’s TRUECOMMERCE trademark”, both have been used to send emails that “utilize the same signature block”, emails from both domain names use similar wording and “use the same email address convention” impersonating the same actual employee of Complainant” and both domains were registered within five days of each other).
Having regard to all of those considerations and the whole of the evidence, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis. For reasons of convenience, the Respondents will hereafter be referred to as “Respondent”.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has achieved widespread popularity through the distribution of video game systems, software, and related products. Complainant has rights in POKEMON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,265,698, registered July 27, 1999). See Compl. Annex 3. Respondent’s <pokemoen.com> and <pokeomeon.com> domain names are confusingly similar to Complainant’s POKEMON mark. Respondent adds additional letters to Complainant’s POKEMON mark.
Respondent lacks rights or legitimate interests in <pokemoen.com> and <pokeomeon.com> domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize Respondent to use the POKEMON mark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to impersonate Complainant’s employees in an attempt to gather personal information. Respondent’s domain names fails to resolve to an active webpage.
Respondent registered and used the <pokemoen.com> and <pokeomeon.com> domain names in bad faith as Respondent engages in a phishing scheme to obtain personal information. Respondent’s domain names resolve to inactive webpage. Respondent had actual knowledge of Complainant’s rights in the POKEMON mark prior to registration of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Japanese company that has achieved widespread popularity through the distribution worldwide of video game systems, software, and related products.
2. Complainant has established its trademark rights in POKEMON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,265,698, registered July 27, 1999).
3. Respondent registered the <pokemoen.com> and <pokeomeon.com> domain names on December 14, 2020 and December 7, 2020 respectively.
4. Respondent uses the domain names to impersonate Complainant’s employees in an attempt to gather personal information and the domain names fail to resolve to an active webpage.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims to have rights in the POKEMON mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per 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.”). Here, Complainant provides the Panel with a copy of its USPTO registration for the POKEMON mark (e.g. Reg. No. 2,265,698, registered July 27, 1999). See Compl. Annex 3. Therefore, the Panel finds that Complainant has rights in the POKEMON mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s POKEMON mark. Complainant argues that Respondent’s <pokemoen.com> and <pokeomeon.com> domain names are confusingly similar to Complainant’s POKEMON mark. Registering a domain name that contains a mark in its entirety and adds additional letters does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’). Here, Complainant argues that Respondent’s domain names incorporate the POKEMON mark in its entirety and add additional letters. The Panel agrees and finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s POKEMON trademark and to use it in its domain names in its entirety and merely adding some further letters which does not negate the confusing similarity that is present;
(b) Respondent registered the <pokemoen.com> and <pokeomeon.com> domain names on December 14, 2020 and December 7, 2020 respectively;
(c) Respondent uses the domain names to impersonate Complainant’s employees in an attempt to gather personal information and the domain names fail to resolve to an active webpage.;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <pokemoen.com> and <pokeomeon.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the POKEMON mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Alissa Lilian / Andrew McFeeters” and there is no other evidence to suggest that Respondent was authorized to use the POKEMON mark or was commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to impersonate Complainant’s employees in an attempt to gather personal information. Use of a disputed domain name to confuse internet users by impersonating a complainant in order to gather personal information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant has provided the Panel with emails associated with the disputed domain names that show Respondent attempted to impersonate Complainant. See Compl. Annex 4. The Panel agrees and finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent’s domain names fail to resolve to an active webpage. Failure to resolve to an active webpage may be evidence that a respondent lacks rights or legitimate interest in a disputed domain name per Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with screenshots of Respondent’s <pokemoen.com> and <pokeomeon.com> domain names’ resolving webpage that show an inactive webpage. See Compl. Annex 5. The Panel agrees and finds that Respondent lacks rights or legitimate interests in the domain names per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not sought in the Response to rebut the prima facie case established by Complainant, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <pokemoen.com> and <pokeomeon.com> domain names in bad faith as Respondent engages in a phishing scheme to obtain personal information. Use of a disputed domain name to pass off as a complainant through email or other means to obtain personal information may be evidence of bad faith per Policy ¶ 4(b)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant has provided the Panel with emails associated with the disputed domain names that show Respondent attempted to impersonate Complainant. See Compl. Annex 4. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant further argues that Respondent’s domain names resolve to inactive webpage. Failure to resolve to an active webpage may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with screenshots of Respondent’s <pokemoen.com> and <pokeomeon.com> domain names’ resolving webpage that show an inactive webpage. See Compl. Annex 5. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the POKEMON mark at the time of registering the <pokemoen.com> and <pokeomeon.com> domain names. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel will, however, determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the POKEMON mark and in view of the conduct of Respondent with respect to the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pokemoen.com> and <pokeomeon.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 15, 2021
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