DECISION

Nintendo of America Inc. v. banyong ruan / 1989 / Alain Lebrun

Claim Number: FA2008001907416

PARTIES

Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, United States. Respondent is banyong ruan / 1989 / Alain Lebrun (“Respondent”), France.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <3ds-linker.com>, <free-switch.com>, and <mod-switch.com>, registered with Chengdu Fly-Digital Technology Co., Ltd., NameCheap, Inc., and NameSilo, 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.

John J. Upchurch as Panelist.

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names each resolve to websites which sell the same devices and link to the same social media accounts. Further, the <free-switch.com> and <mod-switch.com> domain names list the same contact phone numbers for the registrant.

The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled. The Panel, under the Forum’s Supplemental Rule 4(c), determines each of the subject domain names are commonly owned, and elects Alain Lebrun as the named Respondent to proceed against.

Preliminary Issue: Required Language of Complaint

Complainant has alleged that because Respondent is proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. The Panel notes that Respondent has been the subject of a prior UDRP proceeding conducted in English and the disputed domains provide links to English-based posts and websites. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 5, 2020; the Forum received payment on August 5, 2020.

On August 6, 2020 NameSilo, LLC and NameCheap, Inc. confirmed by e-mail to the Forum that the <free-switch.com> and <mod-switch.com> domain names are registered with NameSilo, LLC and NameCheap, Inc, respectively and that Respondent is the current registrant of the names; on August 13, 2020, Chengdu Fly-Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <3ds-linker.com> domain name is registered with Chengdu Fly-Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu Fly-Digital Technology Co., Ltd., NameCheap, Inc., and NameSilo, LLC have verified that Respondent is bound by the Chengdu Fly-Digital Technology Co., Ltd., NameCheap, Inc., and NameSilo, LLC registration agreements 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 August 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@3ds-linker.com, postmaster@free-switch.com, postmaster@mod-switch.com. Also on August 19, 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 September 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

1. Complainant, Nintendo of America, Inc., markets and distributes video games systems, software, and related products. Complainant has rights in the NINTENDO 3DS and NINTENDO SWITCH marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., NINTENDO 3DS - Reg. No. 4,106,294, registered Feb. 28, 2012; NINTENDO SWITCH - Reg. No. 5,477,313, registered May 22, 2018). See Amend. Compl. Ex. 3. Respondent’s <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names are confusingly similar to Complainant’s marks because they use the distinctive “3DS” or “SWITCH” portion of Complainant’s marks and simply add generic or descriptive terms.

2. Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s NINTENDO 3DS or NINTENDO SWITCH marks and is not commonly known by the disputed domain names. Additionally, Respondent doesn’t use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to market and sell devices that facilitate infringement of Complainant’s intellectual property.

3. Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business through competition. Respondent’s illegal use of the domain names further constitutes bad faith. Additionally, Respondent had actual knowledge of Complainant’s rights in the NINTENDO 3DS and NINTENDO SWITCH marks.

B. Respondent

1. Respondent did not submit a response.

FINDINGS

1. Respondent’s <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names are confusingly similar to Complainant’s NINTENDO 3DS or NINTENDO SWITCH marks.

2. Respondent does not have any rights or legitimate interests in the <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names.

3. Respondent registered or used the <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain name in bad faith.

DISCUSSION

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

Complainant asserts rights in the NINTENDO 3DS and NINTENDO SWITCH marks based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018)

(“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of both marks with the USPTO (e.g., NINTENDO 3DS - Reg. No. 4,106,294, registered Feb. 28, 2012; NINTENDO SWITCH - Reg. No. 5,477,313, registered May 22, 2018). See Amend. Compl. Ex. 3. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

Complainant argues that Respondent’s <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names are confusingly similar to Complainant’s marks because they use the distinctive “3DS” or “SWITCH” portion of Complainant’s marks and simply add generic or descriptive terms. The Panel also notes that the disputed domain names each add the “.com” generic top-level domain (“gTLD”) to the marks. Under Policy ¶ 4(a)(i), addition of a generic or descriptive term and a gTLD is insufficient to overcome confusing similarity between a domain name and a mark. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Additionally, the removal of a word from a mark does not necessarily negate confusing similarity. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Complainant argues that the distinctiveness of the “3DS” and “SWITCH” portions of the respective marks is emphasized by the size of each word in Complainant’s design marks. The Panel therefore agrees with Complainant and find that the disputed domain name is identical or confusingly similar to Complainant’s marks 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

Complainant claims that Respondent does not have rights or legitimate interests in the <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names since Respondent is not authorized to use Complainant’s NINTENDO 3DS or NINTENDO SWITCH mark and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Banyong Ruan / 1989 / Alain Lebrum” as the registrants and no information suggests that Complainant has authorized Respondent to use the NINTENDO 3DS or NINTENDO SWITCH marks in any way. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).

Complainant also claims that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead uses the domains to market and sell devices that facilitate infringement of Complainant’s intellectual property. Use of a disputed domain name for illegal purposes does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Here, Complainant provides a screenshot of Respondent’s webpage and claims that Respondent is using the site to promote and sell devices used to play pirated versions of Complainant’s products. See Amend. Compl. Ex. 4. Therefore, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names in bad faith because Respondent disrupts Complainant’s business through competition. Use of a disputed domain name to disrupt a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii), and such disruption can be shown by general competition with the complainant. See Jerie v. Burian, FA 795430 (Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Complainant argues that Respondent’s websites compete with Complainant’s business and are subsequently disruptive because they offer a means for consumers to use pirated versions of Complainant’s products. Complainant provides screenshots of such offerings on Respondent’s website. See Amend. Compl. Ex. 4. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).

Complainant also claims that Respondent’s illegal use of the domain names further constitutes bad faith. Use of a domain name in connection with illegal activity evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). As previously mentioned, Complainant claims that Respondent offers circumvention products that facilitate piracy of Complainant’s products. The Panel agrees with Complainant and finds bad faith under Policy ¶ 4(a)(iii).

Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the NINTENDO 3DS and NINTENDO SWITCH marks when it registered the domain names. Actual knowledge of a complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii) and can be shown through Respondent’s use of the mark and Complainant’s other information in connection with the domain names. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant provides a screenshot of Respondent’s webpage and notes that Respondent makes use of Complainant’s marks and copyrighted material on the site. See Amend. Compl. Ex. 4. Therefore, the Panel finds bad faith registration and use 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 <3ds-linker.com>, <free-switch.com>, and <mod-switch.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: September 22, 2020