DECISION

 

Nintendo of America Inc. v. Foster William

Claim Number: FA2309002061515

PARTIES

Complainant is Nintendo of America Inc. ("Complainant"), represented by Christian W. Marcelo of Perkins Coie, LLP, Washington, USA. Respondent is Foster William ("Respondent"), Albania.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <nintendo-mx.com>, <nintendo-mx.vip>, <nintendo-br.com> and <nintendo-br.vip>, registered with Gname.com Pte. Ltd..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 12, 2023; Forum received payment on September 12, 2023.

 

On September 14, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <nintendo-mx.com>, <nintendo-mx.vip>, <nintendo-br.com> and <nintendo-br.vip> domain names are registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 September 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2023 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@nintendo-mx.com, postmaster@nintendo-mx.vip, postmaster@nintendo-br.com, postmaster@nintendo-br.vip. Also on September 15, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it markets and distributes video game systems, software, and related products. Complainant's products—including consoles and video games—have achieved widespread popularity and have made it famous throughout the world. Complainant marketed its first video game system in 1985 and 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. Complainant 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 claims rights in the NINTENDO mark through its registration in the United States in 2010. The mark is famous.

 

Complainant alleges that the disputed domain names are confusingly similar to its NINTENDO mark as they incorporate the mark in its entirety, merely adding a hyphen and the geographic terms "mx" (which stands for Mexico) or "br" (which stands for Brazil) together with the ".com" or ".vip" generic top-level domains ("gTLDs"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its mark in any way. Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names as part of a phishing scheme and employment scam. Specifically, Respondent is sending fraudulent messages for fake job offers through the messaging platform WhatsApp, inviting users to visit the resolving websites and create an account by entering personal information so that they can earn money; Respondent then collects payments. The resolving websites display Complainant's mark and distinctive logo. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to disrupt Complainant's business by attracting users with a false impression of association with Complainant to perpetrate a fraudulent phishing scheme and employment scam. Respondent registered the disputed domain names with actual knowledge of Complainant's rights in its mark. Respondent used a privacy service. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the registered trademark NINTENDO and uses it to market video game systems, software, and related products. The mark is famous.

 

Complainant's rights in its mark date back to at least 2010.

 

The disputed domain names were registered in 2023.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The resolving websites are used in furtherance of a fraudulent phishing scheme; they display Complainant's mark and distinctive logo.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain names incorporate Complainant's NINTENDO mark in its entirety, merely adding a hyphen and the geographic terms "mx" (which stands for Mexico) or "br" (which stands for Brazil) together with the ".com" or ".vip" generic top-level domains ("gTLDs"). Under Policy ¶ 4(a)(i), adding a gTLD and/or geographic terms and/or relevant or meaningless letters and/or hyphens is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also 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)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.'  These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) ("[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)."); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where "[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain."). Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc'ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Here, the WHOIS information of record shows that the registrant of the disputed domain names is "Foster William". Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant presents evidence showing that Respondent uses the disputed domain names to create the false impression of affiliation with the Complainant in furtherance of a fraudulent phishing scheme and employment scam. Specifically, the resolving websites display Complainant's mark distinctive logo; Respondent is sending fraudulent messages for fake job offers through the messaging platform WhatsApp, inviting users to visit the resolving websites and create an account by entering personal information so that they can earn money; Respondent then collects payments. Previous panels have determined that a respondent's attempt to pass itself off as a complainant, or a respondent's attempt to phish, is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."); see also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant's credit application website and attempted to fraudulently acquire personal information from the complainant's clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. 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, the resolving websites are used to pass off as Complainant in furtherance of a fraudulent phishing scheme in which users are induced to transfer money to Respondent. Previous panels have determined that a respondent's attempt to pass itself off as a complainant and to induce fund transfers constitutes bad faith use in the sense of the Policy. See National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant's mark to fraudulently induce transfer of credit and personal identification information). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the resolving websites display Complainant's mark and distinctive logo. 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 names and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nintendo-mx.com>, <nintendo-mx.vip>, <nintendo-br.com> and <nintendo-br.vip> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: October 6, 2023