Nintendo of America Inc. v. lin amy
Claim Number: FA1811001818485
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is lin amy (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2018; the Forum received payment on November 28, 2018.
On November 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2018 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com. Also on November 29, 2018, 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 December 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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.
Complainant contends as follows:
Complainant, Nintendo of America Inc., is one of the best-selling video game system developers in the world.
Complainant has rights in the NINTENDO mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names are confusingly similar to Complainant’s mark because Respondent wholly incorporates the NINTENDO mark in each domain name, adds generic terms (“online,” “shop,” “shops,” and/or “store”) or adds a single letter (“a”).
Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly known by any disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to confuse users in furtherance of fraud.
Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names’ websites by illegally purporting to sell Complainant’s products. Further, Respondent had actual knowledge of Complainant’s rights in the NINTENDO mark prior to registering the disputed domain names.
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NINTENDO mark.
Complainant’s rights in NINTENDO existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the domain names to pass itself off as Complainant to facilitate fraud.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Next, the <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names each incorporate Complainant’s NINTENDO mark. In one of the domain names Respondent’s prefixes the letter “a” to Complainant’s trademark. In the other domain names Respondent adds a suggestive descriptive term. To each resulting string Respondent’s adds the top level domain name “.com.” The differences between each at-issue domain name and Complainant’s trademark are insufficient to distinguish any of the domain names from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names are each confusingly similar to Complainant’s NINTENDO trademark under Policy ¶4(a)(i). See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); See also, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names.
Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “lin amy`” as the at-issue domain names’ registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by any of the <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names. The Panel thus concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Furthermore, Respondent uses the at-issue domain names to address identical websites which copy one of Complainant’s official websites. Respondent’s websites claim to be “official,” display Complainant’s proprietary intellectual property and purport to offer Complainant’s products for sale. Respondent uses the websites to perpetrate a scam where Respondent takes payments from internet users for products that are never delivered. Respondent’s use of the confusingly similar domain names in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain names. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”); see also Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
In light of the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain names under Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith regarding each domain name pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interest, Respondent uses the at-issue domain names to pass itself off as Complainant in furtherance of a scheme to sell products but never deliver them. Respondent’s use of the domain name in this manner disrupts Complainant’s business and wrongfully attempts to capitalize on Complainant’s trademark by exploiting the confusion between the mark and Respondent’s domain names to give the false impression that Complainant sponsors or is affiliated with the <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> websites. Respondent’s use of the domain names in this manner demonstrates Respondent’s bad faith registration and use of each domain name pursuant to Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Further, Respondent’s illegal effort to defraud innocent third party internet users, in itself, shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Autodesk Inc. v. Telecom Tech Corp., D2011-1670 (WIPO Jan. 30, 2012) (“A respondent's use of a disputed domain to pursue an illegal activity automatically qualifies that domain as having been registered and used in bad faith.”)
Moreover, Respondent registered <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> knowing that Complainant had trademark rights in the NINTENDO trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s mark and from Respondent’s use of the at-issue domain names to impersonate Complainant’s official website in furtherance of fraud. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anintendo.com>, <nintendoonlineshop.com>, <nintendoonlinestore.com>, and <nintendoshops.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 24, 2018
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