Nintendo of America Inc. v. jin jiang lin / lin jin jiang
Claim Number: FA1912001876297
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, United States. Respondent is jin jiang lin / lin jin jiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pokemonhome.com>(‘the Domain Name’), registered with DropCatch.com 381 LLC.
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 December 20, 2019; the Forum received payment on December 20, 2019.
On December 24, 2019, DropCatch.com 381 LLC confirmed by e-mail to the Forum that the <pokemonhome.com> domain name is registered with DropCatch.com 381 LLC and that Respondent is the current registrant of the name. DropCatch.com 381 LLC has verified that Respondent is bound by the DropCatch.com 381 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 December 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2020 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@pokemonhome.com. Also on December 30, 2019, 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 January 23, 2020, 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.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the trade mark POKÉMON registered, inter alia, in the USA for video games since 1999. It is about to release a service called “Pokemon Home”.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s POKÉMON mark adding only the generic term “home” 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 authorised by the Complainant.
The Domain Name has been pointed to commercial advertising sites and has been offered for sale to the Complainant for US$20,000. Pointing a Domain Name to advertising content and plug-ins does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. Offering a domain for sale is also evidence of a lack of rights or legitimate interests in a domain name.
Using the title of the Complainant’s upcoming service shows actual knowledge on the part of the Respondent about the Complainant and its business.
Diverting Internet users to advertising content using a complainant’s mark in a domain name for commercial gain is registration and use in bad faith under ¶¶ 4(b)(iii) and (iv) of the Policy.
Offering a domain name for sale is further evidence of bad faith under Policy ¶ 4 (b)(i).
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 Domain Name registered in 2019 has been pointed to advertising and plug in content and has been offered for sale to the Complainant for US$20,000.
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”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s POKÉMON mark (registered, inter alia, in the USA for video games from 1999), the generic term “home” and the gTLD “.com”.
The addition of the generic word “home” does not serve to distinguish the Domain Name from the Complainant’s mark which is still recognisable in the mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).).
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 provided any evidence that it is commonly known by the Domain Name. The Complainant has not authorised the Respondent to use the Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
The use of a domain name containing a well known mark to resolve to advertising material and plug ins is not a bona fide use. See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”); see also Mediacom Communications Corporation v. zhang wei, FA 1870767 (Forum Dec. 5, 2019) (“[use of] domain name to direct internet traffic to webpages attempting to install an adware plug-in on the user’s browser … is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The Respondent has offered the Domain Name for sale to the Complainant for $20,000. An offer to sell a disputed domain name can be evidence of a lack or rights or legitimate interest in a disputed domain name per Policy ¶ 4(a)(ii).
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 upcoming service Pokemon Home shows that the Respondent was aware of the Complainant and its rights and 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 advertising material and plug ins is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Mediacom Communications Corporation, FA 1870767 (Forum Dec. 5, 2019) (finding bad faith use where domain was used to redirect to websites offering browser plug-ins).
An offer to sell a disputed domain name for more than out-of-pocket costs to the Complainant demonstrates bad faith registration per Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
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 ¶¶¶ 4(b)(i), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pokemonhome.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 26, 2020
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