DECISION

 

Nintendo of America Inc. v. Domain Privacy / Domain Name Privacy Inc.

Claim Number: FA2502002142541

 

PARTIES

Complainant is Nintendo of America Inc. ("Complainant"), represented by Christian W. Marcelo, Washington, USA. Respondent is Domain Privacy / Domain Name Privacy Inc. ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pokemonchampions.com>, registered with DropCatch.com 791 LLC.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 27, 2025; Forum received payment on February 27, 2025.

 

On February 28, 2025, DropCatch.com 791 LLC confirmed by e-mail to Forum that the <pokemonchampions.com> domain name is registered with DropCatch.com 791 LLC and that Respondent is the current registrant of the name. DropCatch.com 791 LLC has verified that Respondent is bound by the DropCatch.com 791 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 March 6, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2025 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@pokemonchampions.com. Also on March 6, 2025, 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 March 27, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant markets and distributes video game systems, software, and related products. Complainant first introduced its video game system, the Nintendo Entertainment System, in 1985. Nintendo's Pokémon brand is one of the most well-recognized brands, with products spanning video games, trading cards, and more. Complainant holds rights, inter alia, in the POKÉMON mark through its registration with the USPTO (e.g., Reg. No. 2,265,698 registered July 27, 1999). The disputed domain name is confusingly similar to Complainant's mark as it incorporates the POKÉMON mark in its entirety, merely appending the term "champions"—a reference to the highest achievable rank by a Pokémon Trainer in the video game series—together with the ".com" gTLD.

 

ii) Respondent lacks any legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has neither authorized nor licensed Respondent to use the POKÉMON mark. Moreover, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website which, depending on the user, either displays a page offering the disputed domain for sale alongside links to sponsored advertisements, or displays a page claiming that the user's device has been infected with a virus and spyware.

 

iii) Respondent registered and is using the disputed domain name in bad faith. Respondent registered the disputed domain name with full knowledge of Complainant's mark. Respondent's use of the disputed domain name exclusively to offer it for sale while displaying revenue-generating advertisements constitutes clear evidence of bad faith registration and use. Respondent's use of monetized advertisements on the disputed domain name constitutes bad faith because it is intentionally attempting to attract, for commercial gain, Internet users to its website. Respondent's use of the disputed domain name to direct some users to pages associated with virus alerts, spyware, and malware itself indicates bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on May 5, 2024.

 

2. Complainant holds rights, inter alia, in the POKÉMON mark through its registration with the USPTO (e.g., Reg. No. 2,265,698 registered July 27, 1999).

 

3. The disputed domain name resolves to a webpage displaying various third-party sponsored links, such as "Best Stock Tracker," "Talkdesk Demo," and "Go to Vacation."

 

4. Respondent has made a general offer to sell the disputed domain name for USD 1,338.00.

 

5. The webpage to which the disputed domain name resolves also displays a warning message falsely claiming that the user's device has been infected with a virus and spyware.

 

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

Complainant has provided evidence of its registration for the mark POKÉMON, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,265,698 registered July 27, 1999). Accordingly, the Panel finds that Complainant has established rights in the POKÉMON mark under Policy ¶ 4(a)(i).

 

Complainant further contends that the disputed domain name <pokemonchampions.com> is confusingly similar to its POKÉMON mark because it incorporates the mark in its entirety, differing only by the addition of "champions," a reference to the highest achievable rank by a Pokémon Trainer in the video game series, along with the ".com" gTLD. Under Policy ¶ 4(a)(i), the addition of a descriptive term and a gTLD is insufficient to distinguish the domain name from the mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."). The disputed domain name incorporates Complainant's mark in its entirety and adds the descriptive or generic term "champions" along with the ".com" gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's POKÉMON mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "Domain Privacy / Domain Name Privacy Inc." as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, as the domain instead resolves to a webpage displaying links unrelated to Complainant's services. Where a respondent employs a domain name to redirect users to unrelated third-party services for commercial gain arising from user confusion, the Panel may conclude that the respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See TGI Friday's of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) ("Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.").

 

Complainant has submitted evidence demonstrating that the disputed domain name resolves to a webpage displaying third-party links not affiliated with Complainant. The Panel observes that the webpage displays various third-party links—such as "Best Stock Tracker," "Talkdesk Demo," and "Go to Vacation"—none of which are affiliated with Complainant. The Panel finds that Respondent is presumably deriving commercial benefit by misleading Internet users and diverting them to its website through exploitation of confusion with Complainant's well-known mark. Accordingly, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or for legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(i) or (iii).

Complainant further asserts that Respondent made a general offer to sell the disputed domain name for USD 1,338.00. The Panel notes and finds that attempting to sell the disputed domain name that is confusingly similar to Complainant's well-known mark for an amount exceeding out-of-pocket expenses does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 2075487 (Forum Jan. 10, 2024) ("The Panel notes that the use of the disputed domain name which is confusingly similar to Complainant's well-known mark to sell it for the amount of out-of-pocket expense does not constitute a bona fide offering of goods or services or any legitimate non-commercial or fair use.").

 

Complainant also contends that the disputed domain name resolves to a website which, depending on the user, displays a page claiming that the user's device has been infected with a virus and spyware. The Panel concurs with Complainant and finds that the use of the disputed domain name to display alarming or deceptive messages—such as false virus or spyware warnings—does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use.

 

In light of the foregoing, the Panel concludes that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. In the absence of any response or other effort by Respondent to rebut this prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Respondent's use of monetized advertisements on the disputed domain name constitutes bad faith because it is intentionally attempting to attract, for commercial gain, Internet users to its website. The Panel finds that the use of a domain name to redirect Internet users to goods or services unrelated to Complainant may constitute evidence of bad faith disruption under Policy ¶ 4(b)(iii), and may also reflect an intent to attract users for commercial gain by creating confusion with Complainant's mark under Policy ¶ 4(b)(iv). As previously noted, Complainant has provided evidence that the disputed domain name resolves to a webpage displaying third-party links not affiliated with Complainant. The Panel further observes that the domain resolves to a webpage displaying various links—such as "Best Stock Tracker," "Talkdesk Demo," and "Go to Vacation"—none of which are affiliated with Complainant. The Panel concludes that Respondent is presumably deriving commercial gain by diverting Internet users seeking Complainant's well-known mark, thereby disrupting Complainant's business. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii) or (iv).

 

Complainant also contends that Respondent registered and is using the disputed domain name in bad faith by offering it for sale at USD 1,338.00, an amount exceeding typical out-of-pocket costs. A general offer for sale can constitute evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Arris Enterprises LLC v. Milen Radumilo, FA 2072536 (Forum Dec. 28, 2023) ("Respondent is offering to sell the disputed domain name, and a general offer for sale may be sufficient to establish registration and use in bad faith per Policy ¶ 4(a)(iii). Further, the offer is for a price far in excess of the out-of-pocket registration fee. An offer to sell a disputed domain name with an inflated price may act as further evidence of bad faith registration and use."); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) ("A respondent's general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).").

 

Complainant has provided a screenshot showing the disputed domain name offered for sale at a minimum of USD 1,338.00, a price far exceeding typical out-of-pocket registration fees. The Panel finds that Respondent's general offer to sell the disputed domain name that is confusingly similar to Complainant's well-known mark constitutes bad faith registration and use under Policy ¶ 4(b)(i).

 

Complainant further contends that Respondent registered the disputed domain name with actual knowledge of Complainant and its marks. In light of the fame of Complainant's POKÉMON mark and the nature of the disputed domain name, the Panel finds it reasonable to infer that Respondent had actual knowledge of Complainant's rights at the time of registration. Accordingly, the Panel finds that Respondent registered the disputed domain name in 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 <pokemonchampions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 28, 2025