Nintendo of America Inc. v. Adrien Hémery
Claim Number: FA2004001892061
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Adrien Hémery (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <switchcheatsdb.com>, (the “Domain Name”) registered with OVH sas.
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.
Clive Lincoln Elliott QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2020; the Forum received payment on April 14, 2020.
On April 16, 2020, OVH sas confirmed by e-mail to the Forum that the Domain Name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@switchcheatsdb.com. Also, on April 17, 2020, 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.
A timely Response was received and determined to be complete on May 4, 2020.
On May 07, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Lincoln Elliott QC 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Washington corporation with its principal place of business in Redmond, Washington, United States of America. Complainant markets and distributes video game systems, software and related products.
Complainant states that it marketed its first video game system, the Nintendo Entertainment System, in 1985, and since then it has released many additional video game systems, including the Nintendo Switch in 2017.
Complainant contends that it has achieved widespread popularity and is widely recognized as one of the best-selling video game system developers in the world.
Complainant states that it, and its affiliated entities, own, use, and have registered worldwide the world-famous NINTENDO SWITCH mark in connection with video game systems, video games, and related accessories.
Complainant contends that its NINTENDO SWITCH mark is inherently distinctive and as such as has achieved widespread fame throughout the world. Complainant registrations for the NINTENDO SWITCH mark include the following (“Complainant’s Mark”):
|
Mark |
Registration Date |
Registration No. |
Country of Registration |
|
NINTENDO SWITCH |
5/29/2017 |
1760024 |
Mexico |
|
NINTENDO SWITCH |
8/8/2017 |
571009 |
Colombia |
|
NINTENDO SWITCH |
9/20/2017 |
1259412 |
Chile |
|
|
4/10/2018 |
5443363 |
United States |
|
NINTENDO SWITCH |
5/22/2018 |
5477313 |
United States |
Complainant contends that Complainant’s Mark has obtained secondary meaning in relation to video games and as such it owns common law rights in Complainant’s Mark.
Complainant advises that since its release, it has sold more than 50 million Switch consoles and more than 300 million games for the Nintendo Switch. Consumers commonly refer to Nintendo Switch consoles and games simply as the “Switch” and “Switch games.” In news articles and internet articles, use of Complainant’s Mark by reference to the Nintendo Switch console is common.
According to the publicly available WhoIs the Domain Name was registered on December 20, 2018. Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it uses the distinctive portion of Complainant’s Mark in its entirety with the addition of the words “cheats” and “db” at the end, referencing the “cheats database” for Nintendo Switch games offered by the website that resolves to the Domain Name. The distinctiveness of the SWITCH portion of Complainant’s Mark is emphasized with the word “Switch” being twice as big as the word “Nintendo”.
Complainant says that consumer confusion will be increased when fans visit Respondent’s website, as it is devoted solely to distributing software designed to be used in connection with Nintendo Switch games.
To the best of Complainant’s knowledge, Respondent does not hold trademark registrations that are identical, similar, or in any way related to the Complainant’s Mark. Further, Respondent is not an authorized dealer, distributor, or licensee of Complainant and neither is there any indication Respondent is commonly known by the Domain Name.
Complainant submits that Respondent’s use of the Domain Name is illegal and directly harms Complainant. Respondent is using Complainant’s Mark to market and distribute software that modifies Nintendo Switch games in order to implement “cheats” for various Nintendo Switch games. Moreover, the Respondents website uses Nintendo’s intellectual property, including Complainant’s Mark and copyrighted works, to advertise and promote the website. Respondent’s distribution of this software, allowing users to circumvent Nintendo’s copyright protections, is illegal and infringes Nintendo’s copyrights.
Complainant further submits that Respondent is using the Domain Name and website for commercial gain including by providing pay-per-click advertisements throughout the website and that such use cannot be noncommercial and does not qualify as a bona fide offering.
Complainant contends that Respondent has registered and is using the Domain Name in bad faith as Respondent knew of Nintendo and its rights prior to registering the Domain Name. By the time Respondent registered the Domain Name, Complainant had sold millions of Nintendo Switch consoles and hundreds of millions of Nintendo Switch games.
Additionally, Respondent chose a domain name relating directly to the Nintendo Switch to operate a website distributing software to be used in connection with Nintendo Switch games while using Nintendo’s intellectual property throughout Respondent’s website. Complainant contends that this establishes that Respondent knew of Nintendo’s prior rights to the Nintendo Switch Marks.
Complainant also submits that Respondent’s activity is in bad faith because it disrupts Complainant’s business. The distribution of software intended to “hack” Nintendo Switch games enables users to circumvent Complainant’s copyright protections. In addition, the website uses Complainant’s intellectual property to facilitate the distribution of this software. This use of Complainant’s intellectual property serves to confuse consumers as to whether the distribution of this software is permitted or offered by Complainant.
B. Respondent
Respondent acknowledges that the Domain Name includes the word “switch” but says that because it is attached to other words, it is therefore very unlikely that an internet user would be deceived. Respondent contends that the terms used are self-explanatory and would not cause confusion as to the purpose of the site.
Respondent argues that the site only identifies cheat codes that are freely and easily accessible on the internet, and the words in the Domain Name only reflect the purpose of the site.
Respondent further contends that the site only collects and offers codes for cheating in games, which can be an integral part of the life of a video game, and which has been practiced for many years. Cheating also allows people to buy games because they know that they will be able to progress more easily within it or to get rid of certain situations.
Respondent submits that the site does not offer any way to download illegal versions of games or any other illegal act, nor is any financial compensation requested to use the services offered by the site, as all contents are freely accessible.
Respondent states that in order to prove his good faith he is now using a new domain name.
For the reasons set out below Complainant succeeds in establishing that the grounds under the Policy are satisfied and accordingly that the Domain Name should be transferred from Respondent to Complainant.
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.
Preliminary Issues
Two preliminary procedural issues need to be determined.
Foreign Language Response
The language of the registration agreement for the Domain Name is French. Under UDRP Rule 11(a), the Panel has the authority to determine which language should be used for the proceedings, considering the circumstances of the case. “Factors which previous panels have seen as particularly compelling are: a respondent’s use of a website containing text in the requested language, correspondence from a respondent in the requested language, the prevalence of the requested language in the location where a respondent resides, and any other evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by a complainant.” Epic Games, Inc. v. Oliver Wagner, FA 1887270 (Forum Apr. 6, 2020). Complainant has requested the proceedings be conducted in English; the Respondent has requested the proceedings be conducted in French.
Complainant is a US corporation. It has lodged the Complaint in English. While Respondent is a French citizen and seeks to have the proceedings conducted in French, he is able to communicate in English and the response is in English. Under the circumstances, the Panel regards English as the most appropriate language for the decision.
Consent to Transfer
Respondent consents to transfer the Domain Name to Complainant. However, after the initiation of this proceeding, OVH placed a hold on Respondent’s account and therefore Respondent could not transfer the Domain Name while this proceeding was still pending. Previous panels have taken contrasting approaches to a situation where a respondent consents to a transfer of the domain name to a complainant.
One approach is to forego the traditional UDRP analysis and order an immediate transfer of the domain name in issue.
Alternatively, the Panel may decide that the complainant has not implicitly consented in its complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel may feel that the “consent-to-transfer” approach is an attempt by a cybersquatter to avoid adverse findings against them: see Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008). Under these particular circumstances, the Panel takes the view that Complainant is entitled to a decision on the merits and has not indicated otherwise.
Complainant asserts rights in the NINTENDO SWITCH mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Complainant provides copies of its trademark registrations of the NINTENDO SWITCH mark. Accordingly, the Panel finds that Complainant has established rights in Complainant’s Mark for the purposes of Policy ¶ 4(a)(i). Further, Complainant claims rights in Complainant’s Mark based upon use in commerce in connection with video game systems, video games, and related accessories. Complainant has established that Complainant’s Mark has acquired secondary meaning related to video game systems, video games, and related accessories due to substantial sales, media and consumer recognition.
The Panel finds that the Domain Name is confusingly similar to Complainant’s Mark as it incorporates a material part of the trademark, and merely adds the terms “cheats” and “db” (referencing “cheats database). Where a trademark or a material part of it is recognisable within a disputed domain name, the addition of other descriptive terms does not prevent a finding of confusing similarity under the first element the key policy.
The Panel therefore finds that the Domain Name is confusingly similar to Complainant’s Mark under Policy ¶ 4(a)(i).
Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the Domain Name. Then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.
Complainant argues Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name and Complainant has not licensed or authorized Respondent to use Complainant’s Mark. Further, Complainant contends that the Domain Name resolves to a website that markets and distributes software that modifies Complainant’s games in order to implement “cheats” for Complainant’s games. The Panel concludes that the purpose of this exercise is to market and promote unauthorised use of Complainant’s systems. That is, in order to distribute software intended to “hack” Complainant’s games. Further, it appears that Respondent is providing pay-per-click advertisements through his website. He does so using a domain name which is confusingly similar to Complainant’s Mark.
Respondent has failed to present evidence that he has any right or legitimate interest in doing so. Accordingly, the second limb of the policy is satisfied, namely ¶ 4(c)(iii).
Complainant contends Respondent registered and uses the Domain Name in bad faith because Respondent disrupts Complainant’s business under Policy ¶ 4(b)(iii). Complainant does not allege that Respondent uses the Domain Name to compete with Complainant’s video game business; that is, Respondent is not allegedly using the Domain Name to offer Complainant’s Switch video games or consoles. Instead, it appears that Respondent distributes software intended to “hack” Complainant’s games, enabling users to circumvent Nintendo’s copyright protections. In the Panel’s view, this conduct generates ad or “click-through” revenue from the website and demonstrates that Respondent registered and uses the Domain Name in bad faith. See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
The Panel therefore finds Respondent registered and uses the Domain Name in bad faith per Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent had actual knowledge of Complainant’s rights in Complainant’s Mark at the time of registration of the Domain Name, based on Respondent’s use of the mark in connection with offering cheat codes and modifiers for Complainant’s games. This is sufficient to show that Respondent had actual knowledge of Complainant’s trademark rights prior to registration.
Accordingly, the Panel finds Respondent registered and uses the Domain Name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchcheatsdb.com> domain name be TRANSFERRED from Respondent to Complainant.
Clive Elliott QC, Panelist
Dated: May 25, 2020
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