Nintendo of America Inc. v. Jinlong Wu
Claim Number: FA2107001955752
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Jinlong Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pokemoner.net>, <pokemoner.org>, <pkmner.com>, and <ninteny.com>, registered with Name.com, Inc..
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.
Complainant submitted a Complaint to the Forum electronically on July 19, 2021; the Forum received payment on July 19, 2021.
On July 20, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <pokemoner.net>, <pokemoner.org>, <pkmner.com>, and <ninteny.com> 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 July 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@pokemoner.net, postmaster@pokemoner.org, postmaster@pkmner.com, postmaster@ninteny.com. Also on July 23, 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 August 16, 2021, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it markets and distributes video games systems, software, and related products. Complainant’s products—including consoles and video games—have achieved widespread popularity and have made the Nintendo brand famous throughout the world since they were first marketed in 1985. Complainant has rights in the NINTENDO and POKEMON marks based their registration in the United States in, respectively, 1990 and 1999. The marks are registered elsewhere around the world and they are famous.
Respondent alleges that the disputed domains are confusingly similar to its marks for the following reasons. The disputed domain names <pokemoner.org> and <pokemoner.net> contain the entirety of Complainant’s POKEMON mark, merely adding the letters “er” and the top-level domain. The disputed domain <pkmner.com> is a clear misspelling of the mark, merely removing the vowels in the mark and adding the letters “er” and the top-level domain. The disputed domain <ninteny.com> is a clear misspelling of the Complainant’s NINTENDO mark , merely replacing the “do” with the letter “y”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s NINTENDO or POKEMON marks and is not commonly known by the disputed domain names. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a website that purports to distribute infringing copies of Complainant’s copyrighted works while displaying advertisements.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by illegally offering infringing copies of Complainant’s goods at the resolving webpages. Additionally, Respondent had actual knowledge of Complainant’s rights in the NINTENDO and POKEMON marks when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the marks NINTENDO and POKEMON and uses them to market video games and related products and services. The marks are famous.
Complainant’s rights in its marks date back to, respectively, 1990 and 1999.
The disputed domain names were registered in 2017 and 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites display advertising and purport to offer unauthorized, infringing, 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”).
The disputed domain names <pokemoner.org> and <pokemoner.net> contain the entirety of Complainant’s POKEMON mark, merely adding the letters “er” and the top-level domain. The disputed domain name <pkmner.com> is a clear misspelling of the mark, merely removing the vowels in the mark and adding the letters “er” and the top-level domain. The disputed domain name <ninteny.com> is a misspelling of the Complainant’s NINTENDO, merely replacing the “do” with the letter “y”; it is phonetically similar to Complainant’s NINTENDO mark. Such changes are not sufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Chex Systems, Inc. v. Rony Daniel / Outdoor Living Inc, FA1633760 (Forum Sept. 16, 2015) (finding <chexinfo.com> confusingly similar to the mark CHEXSYSTEMS because it included the distinctive “CHEX” portion of the mark); see also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Quora, Inc. v. Santosh Kalwar, FA1910001866468 (Forum Nov. 15, 2019) (“The disputed domain name <kuora.co> corresponds to Complainant's registered QUORA trademark, but for the substitution of the letter "K" for the phonetically similar "Q" and the addition of the ".co" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark.”). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. 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.”). Here, the WHOIS information of record notes “Jinlong Wu” as the registrant of the disputed domain names. Thus the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The disputed domain names resolve to a web site that displays advertising and purports to offer unauthorized versions of Complainant’s products; this infringes Complainant’s copyrights and is illegal. Use of a disputed domain name for illegal purposes does not qualify as 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 Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Additionally, trading off the value of a mark to attract Internet users for commercial gain is not indicative of rights or legitimate interests. See Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name). Therefore, the Panel finds that Respondent is not using the disputed domain names to make 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). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent disrupts Complainant’s business by illegally offering infringing versions of Complainant’s goods at the resolving webpages. The resolving websites include advertising links, so there is a commercial gain for Respondent. This is evidence of bad faith under Policy ¶¶¶ 4(a)(iii), 4(b)(iii), and 4(b)(iv). 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); see also 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).”); see also SAAVN, LLC. v. David Dhawan, FA1519621 (Forum Nov. 5, 2013) (finding bad faith use and registration because respondent’s websites provided free, illegal downloads, of music in direct competition with complainant’s music business); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds bad faith registration and use under Policy ¶¶¶ 4(a)(iii), 4(b)(iii), and 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s marks: the resolving websites refer to Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has engaged in a pattern of bad faith registration and use of disputed domain names: as noted above, it registered and used in bad faith the four domain names that are the subject of the instant proceedings. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pokemoner.net>, <pokemoner.org>, <pkmner.com>, and <ninteny.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill Panelist
Dated: August 17, 2021
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