Nintendo of America Inc. v. Pamela Baysinger
Claim Number: FA2006001901916
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Pamela Baysinger (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <switchcontrollers.store>, registered with Google 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 26, 2020, Google LLC confirmed by e-mail to the Forum that the <switchcontrollers.store> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 July 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@switchcontrollers.store. Also on July 1, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant, Nintendo of America Inc., markets and distributes video games systems, software, and related products. The complaint is based on Nintendo’s numerous trademark rights in the NINTENDO SWITCH mark and Nintendo’s common law rights in the standalone SWITCH mark in connection with video game systems, video games, and related accessories (collectively, referred to as the “Nintendo Switch Marks”).
Complainant has rights in the NINTENDO SWITCH mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,477,313, registered May 22, 2018). Respondent’s <switchcontrollers.store> domain name is confusingly similar to Complainant’s mark because it incorporates the distinctive portion of Complainant’s NINTENDO SWITCH mark and simply adds the word “controllers.”
Respondent does not have rights or legitimate interests in the <switchcontrollers.store> domain name. Respondent is not licensed or authorized to use Complainant’s NINTENDO SWITCH marks and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates a false impression of affiliation with Complainant and purports to sell Complainant’s products.
Respondent registered and uses the <switchcontrollers.store> domain name in bad faith. Respondent misleads consumers to purportedly sell Complainant’s products. Additionally, Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Nintendo of America Inc., markets and distributes video games systems, software, and related products. Complainant has rights in the NINTENDO SWITCH mark based upon registrations with the USPTO (e.g., Reg. No. 5,477,313, registered May 22, 2018). Respondent’s <switchcontrollers.store> domain name is confusingly similar to Complainant’s mark because it incorporates the distinctive portion of Complainant’s NINTENDO SWITCH mark and simply adds the word “controllers.”
Complainant’s Nintendo products—including consoles and video games—have achieved widespread popularity and have made the Nintendo brand famous throughout the world. Nintendo markets and distributes video game systems, software, and related products. Nintendo marketed its first video game system, the Nintendo Entertainment System, in 1985. Nintendo has since released additional video game systems including the Super Nintendo Entertainment System in 1991, Nintendo 64 in 1996, Nintendo GameCube in 2001, Nintendo DS in 2004, Wii in 2006, Nintendo DSi in 2008, Nintendo 3DS in 2011, Wii U in 2012, and Nintendo Switch in 3 148615091.1 2017. Nintendo is widely recognized as one of the best-selling video game system developers in the world. Nintendo 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.
Nintendo also owns common law rights to the SWITCH mark dating back to at least as early as 2017. Respondent’s <switchcontrollers.store> domain name is confusingly similar to Complainant’s SWITCH mark.
Respondent registered the <switchcontrollers.store> domain name on February 18, 2020.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is using the domain name to operate a website (the “Website”) which purports to sell discounted Nintendo products, including gaming systems and games. The Website attempts to impersonate an official Nintendo website, claiming to be the “Nintendo Switch Shop” and using Nintendo’s intellectual property, including the Nintendo Switch Marks, throughout the Website. Neither the Respondent nor the Website are affiliated with or authorized by Nintendo.
Respondent registered and uses the disputed domain name in bad faith
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”).
The Nintendo Switch brand has enjoyed extensive sales becoming synonymous with excellence in modern video gaming. The NINTENDO SWITCH mark is inherently distinctive and has achieved widespread fame throughout the world. Nintendo has several registrations for the NINTENDO SWITCH mark covering a wide range of classes. Nintendo’s registrations include both design marks and standalone word marks.
Nintendo also owns common law rights in the SWITCH mark. The SWITCH mark has obtained secondary meaning in relation to video games. Nintendo therefore owns common law rights in the mark. See Nintendo of America, Inc. v. Dajana Shawn, FA 1798791 (Forum Sept. 8, 2018) (evidence of sales and media references “fully supports Complainant’s claim of common law rights in the standalone SWITCH mark, and it is clear from this evidence that these rights arose almost immediately after the product was launched in March 2017, if not even before then.”).
Since its release, Nintendo has sold more than 50 million Switch consoles and more than 300 million games for the Nintendo Switch. Such substantial sales demonstrate that Nintendo has established secondary meaning in the SWITCH mark. Media and consumers commonly refer to Nintendo Switch consoles and games simply as the “Switch” and “Switch games.” In news articles and internet articles, use of the standalone SWITCH mark to refer to the Nintendo Switch console is common. Consumers also refer to the handheld devices and games using the SWITCH mark. A Google search of ‘Switch’ returns a first page of results almost exclusively related to Nintendo. Here, the SWITCH mark has acquired secondary meaning. Nintendo has established common law rights in the SWITCH mark.
The disputed domain, <switchcontrollers.store> is confusingly similar to the Nintendo Switch mark as it uses the entirety of the distinctive portion of the mark in the domain name. See Chex Systems, Inc. v. Rony Daniel / Outdoor Living Inc., FA 1633760 (Forum Sept. 16, 2015) (finding <chexinfo> confusingly similar to the mark CHEXSYSTEMS because it included the distinctive “CHEX” portion of the mark). The distinctiveness of the SWITCH portion of the NINTENDO SWITCH is emphasized and demonstrated in the NINTENDO SWITCH design mark. The word “Switch” is twice as big as the word “Nintendo,” and its prominent display and location make it clearly distinctive from the NINTENDO house mark. See Jim Blackmon v. Mary Alvarez / Innovative Promotions, FA 1526715 (Forum Dec. 6, 2013) (finding confusing similarity between a domain and a design mark noting that the panel “does not concern itself with trademarks themselves, but rather whether the words of a trademark are so similar to the words in a domain name so as to create a confusing similarity between the two”).
Additionally, the disputed domain is confusingly similar to Nintendo’s SWITCH mark, in which Nintendo owns common law rights. The domain name uses the SWITCH mark in its entirety, and it is the most prominent feature of the domain, adding only the word “controllers” to the end, clearly referencing the sale of Nintendo video game-related products, such as controllers, on the Website. The addition of generic words or words relating to the competing goods sold on the Website is insufficient to dispel confusion. See Nintendo of America Inc. v. Alex Wang, et al., FA 1721638 (Forum May 3, 2017) (finding confusing similarity where the disputed domain added “r4igold” to the 3DS mark (r4igold3ds.net) because “R4i Gold” was descriptive of and related to the products sold by respondent through the disputed domain and were intended to be used with Nintendo’s products).
Moreover, under both the NINTENDO SWITCH and SWITCH marks, consumer confusion is increased when fans visit the Website, which purports to sell Nintendo Switch products using Nintendo’s intellectual property to impersonate Nintendo’s official website.
For all the above reasons, the Disputed Domain is confusingly similar to the Nintendo Switch Marks pursuant to UDRP Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i).
Respondent does not hold trademark registrations that are identical, similar, or in any way related to the Nintendo Switch Marks. Respondent is not an authorized dealer, distributor, or licensee of Nintendo. There is no indication that Respondent, Pamela Baysinger, is commonly known by the disputed domain. Morgan Stanley v. Bruce Molsky, FA 1328823 (Forum July 13, 2010) (finding respondent was not commonly known as “MORGANSTANLEY” or “morganstanleyproperties.com” when WHOIS registrant was “Bruce Molsky”). These three facts are sufficient to establish a prima facie showing that Respondent lacks rights and legitimate interest in domain name. See CA Immobilien Anlagen Aktiengesellschaft v. Tianlang Li, FA 1380921 (Forum May 6, 2011) (“Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use its name. Complainant thus has made a prima facie showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name, shifting to Respondent the burden to come forward with concrete evidence of such rights or legitimate interests.”).
After a prima facie showing by the complainant, the burden shifts to the respondent to show that it did in fact have rights and a legitimate interest in the domain name. Id. Here, the Respondent is using the Website to deliberately mislead Internet consumers by designing the Website to appear as if it is affiliated with Nintendo, including through the use of the Nintendo Switch Marks in the domain name and throughout the Website, and purporting to sell discounted Nintendo products. As such, Respondent cannot meet its burden.
Respondent is using the Nintendo Switch Marks to create the false impression that the website is an official Nintendo website, or affiliated with or authorized by Nintendo, to purportedly sell Nintendo products. However, neither the Website nor the Respondent is affiliated with or authorized by Nintendo. The use of the Website to impersonate Nintendo to offer competing services is illegal, and so the Respondent is not using the disputed domain to offer bona fide goods or services. IFPI Secretariat v. Alexander Ulanov/Funkysouls, WIPO Case No. D2016-1741 (October 3, 2016) (websites used for illegal purposes cannot be fair, legitimate, or bona fide use); see also Dell Inc. v. Jitendra priyadarshi, FA 1811046 (Forum Nov. 3, 2018) (“an attempt to sell Complainant’s competing goods does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”). Therefore, Respondent is not commonly known by the disputed domain, and Respondent’s use of the disputed domain is neither (a) a bona fide offering of goods or services nor (b) a legitimate noncommercial or fair use pursuant to UDRP Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii).
Nintendo must show that the disputed domain was registered and is being used in bad faith. Policy UDRP Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii). Bad faith registration is established if “by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.” UDRP Policy ¶ 4(b).
Respondent had actual knowledge of the Nintendo Switch Marks prior to registering the disputed domain name. See World Wrestling Entertainment, Inc. v. wwegp /d/b/a duan wenxu, FA 1439779 (Forum May 29, 2012) (finding respondent’s knowledge of complainant’s mark was “conclusively suggested by Respondent’s use of the domain name to host competing services as well as the obvious and undenied connection between Respondent’s hosted content and Complainant’s business.”).
Second, Respondent’s illegal use of the disputed domain constitutes bad faith. Respondent uses the Nintendo Switch Marks in the domain name to impersonate Nintendo and/or claim false affiliation with Nintendo for Respondent’s commercial gain. This alone is sufficient to establish bad faith in both registration and use: “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.” Autodesk Inc. v. Telecom Tech Corp., WIPO Case No. D2011-1670 (Jan. 30, 2012); see also, Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark, LLC. v. Moniker Privacy Services / Kyle Lynch, WIPO Case No. D2014-1525 (Nov. 4, 2014) (finding bad faith registration and use where respondent’s webpages offered illegal downloads of complainant’s music).
Third, in addition to the generally illegal activity, Respondent’s activity is also independently in bad faith because Respondent is using the Nintendo Switch Marks to mislead consumers into believing the Website is a legitimate Nintendo website, or affiliated with Nintendo. After misleading consumers into visiting the Website, Respondent uses it to falsely claim to be affiliated with Nintendo and to purportedly sell Nintendo products. The Respondent’s actions constitute bad faith use. Dell Inc. v. Jitendra priyadarshi, FA 1811046 (Forum Nov. 3, 2018) (“[B]y using the domain name along with photographs of products labeled with Complainant’s mark, Respondent attempts to profit by creating a likelihood of confusion with Complainant’s DELL mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. . . Therefore, the Panel finds Respondent attempts to disrupt Complainant’s business and commercially benefit off of Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchcontrollers.store> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 9, 2020
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