DECISION

 

Nintendo of America Inc. v. dylan reich / Mig switch

Claim Number: FA2407002106117

PARTIES

Complainant is Nintendo of America Inc. ("Complainant"), represented by Christian W. Marcelo of Perkins Coie LLP, Washington, USA. Respondent is dylan reich / Mig switch ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <migswitch.store>, (the "Domain Name") registered with Tucows Domains Inc..

 

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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 12, 2024; Forum received payment on July 12, 2024.

 

On July 12, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <migswitch.store> Domain Name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2024 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@migswitch.store. Also on July 17, 2024, 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 August 7, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant owns, inter alia, the mark NINTENDO registered in the USA for video game related goods and services and used since at least 1988 and the mark NINTENDO SWITCH (word and logo form) registered in the USA for the same goods and services since 2018 and used since 2016. The Complainant also owns common law rights in the mark SWITCH which is commonly used by the Complainant and the market to refer to the Complainant's NINTENDO SWITCH product.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's NINTENDO SWITCH mark and contains the Complainant's SWITCH mark in its entirety adding the generic term 'mig' and the gTLD .store which does not prevent such confusing similarity.

 

The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and is not authorised by the Complainant.

 

The Domain Name is being used to operate a website which offers tools to allow consumers to illegally play the Complainant's computer games. Such use cannot be a bona fide offering of goods and services and is not a legitimate non commercial or fair use. It is registration and use in bad faith in full knowledge of the Complainant's confusing Internet users for commercial gain and disrupting the Complainant's business with illegal activity, the latter being bad faith per se.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant owns, inter alia, the mark NINTENDO registered in the USA for video game related goods and services and used since at least 1988 and the mark NINTENDO SWITCH (word and logo form) registered in the USA for the same goods and services since 2018 and used since 2016. The Complainant also owns common law rights in the mark SWITCH which is commonly used by the Complainant and the market to refer to the Complainant's NINTENDO SWITCH product.

 

The Domain Name registered in 2024 is being used to operate a website which offers tools to allow consumers to illegally play the Complainant's computer games.

 

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 Complainant owns, inter alia, common law rights in SWITCH for goods and services related to video games with first use going back to 2016. The Domain Name consists of the Complainant's SWITCH mark, the generic word 'mig' and the gTLD .store.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic word 'mig' does not distinguish the Domain Name from the Complainant's SWITCH trade mark pursuant to the Policy.

 

The gTLD .store does not serve to distinguish a domain name from a complainant's mark. 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 holds that the Domain Name is confusingly similar to the Complainant's SWITCH trade mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its marks.

 

Although 'mig switch' appears on the WhoIs details the Domain Name was not registered until 2024 and there is no corroborating evidence to show that the Respondent is commonly known by the Domain Name. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).

 

Respondent's activity allows illegal unauthorised use of the Complainant's computer games. 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.").

 

The Respondent has not answered this Complaint or provided any explanation to rebut the prima facie case evidenced by the Complainant as set out herein.

 

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

Respondent's activity is illegal and designed to disrupt the Complainant's business which demonstrates bad faith. 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 indicates Respondent's bad faith).

 

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 under para 4(b)(iii) and (iv).

 

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 <migswitch.store> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: August 7, 2024