Nintendo of America Inc. v. zhi Li
Claim Number: FA2111001974680
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is zhi Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pokemonarceus.com>, (‘the Domain Name’)registered with MAFF 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2021; the Forum received payment on November 24, 2021.
On December 8, 2021, MAFF Inc. confirmed by e-mail to the Forum that the <pokemonarceus.com> Domain Name is registered with MAFF Inc. and that Respondent is the current registrant of the name. MAFF Inc. has verified that Respondent is bound by the MAFF 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 13, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of January 3, 2022 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@pokemonarceus.com. Also on December 13, 2021, the Chinese and English language 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 6, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the trade mark POKÉMON registered, inter alia, in the USA for video games since 1999. The Complainant has a trade mark application for Pokémon Legends Arceus in relation to one of its games.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s POKÉMON mark adding only ‘Arceus’ referring to the Complainant’s game and the gTLD “.com” which do not prevent such confusing similarity.
The Respondent does not have rights or legitimate rights in the Domain Name, is not commonly known by it and has not been authorized by the Complainant.
The Domain Name has been pointed to adult content. Pointing a Domain Name to adult content does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Diverting Internet users to adult content using a complainant’s mark in a domain name is registration and use in bad faith under 4(b)(iii) of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark POKÉMON registered, inter alia, in the USA for video games since 1999. The Complainant has a trade mark application for Pokémon Legends Arceus.
The Domain Name registered in 2020 has been used for adult content.
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 Domain Name in this Complaint combines the Complainant’s POKÉMON mark (registered, inter alia, in the USA for video games from 2019), ‘arceus’ and the gTLD “.com”.
The addition of ‘arceus’ a reference to a game of the Complainant does not serve to distinguish the Domain Name from the Complainant’s mark which is still recognisable in the mark. See Chex Systems, Inc. v. Rony Daniel / Outdoor Living Inc, FA1633760 (Forum Sept. 16, 2015) (finding the domain name confusingly similar to the Complainant’s mark because it included the distinctive “CHEX” portion of the mark).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
The Respondent has not answered this Complaint to explain the background to the registration of the Domain Name and is not authorized by the Complainant. The Respondent does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and is not legitimate noncommercial fair use.
The Complainant has adduced evidence that the Domain Name has been used for adult content. The use of a domain name containing a well-known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The reference by the Respondent to the name of the Complainant’s video game including ‘arceus’ shows that the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name.
Use of a domain name containing a trade mark in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy 4(b)(iii). See Molson Canada 2005 v. JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb. 10, 2015). The fact that the Respondent’s web site looks different to the Complainant is not relevant where a complainant’s trade mark has been used for adult content.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pokemonarceus.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 7, 2022
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