Nintendo of America Inc. v. Christian Dahl / game.toys
Claim Number: FA2104001940517
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Christian Dahl / game.toys (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <poke.store>, registered with GoDaddy.com, 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.
Anne M. Wallace, QC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2021; the Forum received payment on April 6, 2021.
On April 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <poke.store> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 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@poke.store. Also on April 12, 2021, 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 3, 2021.
Complainant provided a timely Additional Submission on May 6, 2021.
On May 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, 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
a. Complainant develops and sells video games, consoles, and related branded products. Complainant has rights in the POKÉMON, POKÉ BALL, POKÉ PLUSH, and POKÉ DOLL marks (hereinafter “the POKÉ marks”) through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. POKÉMON Reg. 2,265,698, registered July 27, 1999; POKÉ BALL Reg. 2,437,410, registered Mar. 20, 2001). Respondent’s <poke.store> domain name is confusingly similar to Complainant’s marks as it incorporates a dominant portion of the marks, removes the accent mark from the “e”, and adds the “.store” generic top-level domain (“gTLD”).
b. Respondent lacks rights and legitimate interests in the <poke.store> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its POKÉ marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and purports to sell Complainant’s products without authorization, or counterfeit products.
c. Respondent registered and uses the <poke.store> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and purporting to sell Complainant’s products without authorization or counterfeit products. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the POKÉ marks.
B. Respondent
Respondent submits that Complainant has not demonstrated that it has trademarks in the word “poke”. Respondent utilizes a disclaimer on the disputed domain name’s resolving website, along with a mark different from Complainant’s mark. Complainant’s cited precedent involves misspelled domain names, while the domain name at issue here involves a word that is not confusingly similar to Complainant’s marks or business.
C. Additional Submissions
Complainant submits:
a. The use of a misspelled mark is only one basis for a finding of confusing similarity. Panels routinely find confusing similarity where respondent uses a portion of complainant’s mark as is the case there. The dominant portion of the POKÉ marks is the word POKE together with generic words such as BALL and PLUSH.
b. Respondent is a repeat infringer previously responsible for the domain name <pokeman-go.store> which sold the same or similar counterfeit or unlicensed Pokémon-branded products as currently sold through the <poke.store> website. Respondent continues to use Nintendo’s intellectual property throughout the website to advertise these counterfeit and unlicensed goods. On or around June 30, 2020, Nintendo initiated a UDRP in connection with the domain name, and the Forum panel granted the transfer of the domain on July 23, 2020: see Nintendo of America Inc. v. Christian Dahl / Konsolenprofis, FA1901915 (Forum July 23, 2020). The panelist held that Respondent’s use of the domain name “to sell products that are counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use” and was evidence of bad faith. Now, Respondent continues to sell those same products through the Disputed Domain and continues to use Nintendo’s intellectual property throughout the Website to advertise those goods. Thus, for the same reasons as found in the prior UDRP proceedings involving Respondent, the Disputed Domain should be transferred.
FINDINGS
The Panel finds:
1. The disputed domain name is confusingly similar to the POKÉ marks in which Complainant has rights.
2. Respondent has no rights or legitimate interests in the disputed domain name.
3. Respondent registered and is using 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.
Complainant claims rights in the POKÉMON, POKÉ BALL, POKÉ PLUSH, and POKÉ DOLL marks (hereinafter “the POKÉ marks”) through its registrations with the USPTO (e.g. POKÉMON Reg. 2,265,698, registered July 27, 1999; POKÉ BALL Reg. 2,437,410, registered Mar. 20, 2001). Registration with the USPTO is generally evidence to establish rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
With its registrations, Complainant has established rights in the POKÉ marks under Policy ¶ 4(a)(i). The fact the marks also include generic words such as BALL, PLUSH and DOLL does not detract from the legitimacy of Complainant’s rights in the POKÉ mark.
Complainant argues that Respondent’s <poke.store> is confusingly similar to the POKÉ marks. Incorporating the dominant part of a mark, removing an accent mark from a letter, and adding a generic or descriptive gTLD to the end of a mark is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also Florentine Caffe, Inc. v. Pfeffer, FA 465152 (Forum June 3, 2005) (finding that “[t]he removal of the accent is insignificant under the Policy because it is not possible to reproduce such punctuation in a domain name”); see also DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Forum July 14, 2014) (holding that the addition of the new “.menu” gTLD combined with the “dunkin” element adds to the confusing character of the domain at issue.).
The disputed domain name incorporates the word “poke”, which is the dominant part of the POKÉ marks, removes the accent mark, and adds the “.store” gTLD to the end of the mark. Complainant also provides two cases that have found that the use of the word “poke” in disputed domain names is confusingly similar to Complainant’s marks. On this basis, Complainant has established that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Under this element, 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). The burden then 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 argues that Respondent is not commonly known by the <poke.store> domain name, nor has Complainant authorized or licensed Respondent to use its POKÉ mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s claim that it never authorized or licensed a Respondent to use its mark in the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also 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, along with the response in this proceeding, identify Respondent as “Christian Dahl” of “game.toys”. This establishes prima facie that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant submits that Respondent does not use the <poke.store> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) or (iii), using a disputed domain name to pass off as a Complainant and sell Complainant’s products without permission or counterfeit products is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and products for sale that may be counterfeits or Complainant’s products. On this basis, Complainant has established prima facie that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The onus now shifts to Respondent. Respondent claims it included a disclaimer on the <poke.store> domain name’s resolving website. Past panels have noted that use of a disclaimer does not always mitigate internet user confusion and thus does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name).
Respondent provides no screenshots of the disputed domain name’s resolving website, and Complainant’s screenshots are in a foreign language, but the site does not appear to have a disclaimer. Even if the site did have a disclaimer, that does not mitigate the confusion or establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has established Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <poke.store> domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as Complainant and sell Complainant’s products without authorization or sell counterfeit products is generally considered bad faith disruption for commercial gain. See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant’s screenshots of the disputed domain name’s resolving website show that the site is replete with use of Complainant’s marks and purports to sell either counterfeit products or Complainant’s products. This is without authorization. This evidence establishes that Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <poke.store> domain name with actual knowledge of Complainant’s rights in the POKÉ marks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to establish bad faith, and may be demonstrated by Respondent registering a confusingly similar domain name to a registered mark, along with Respondent’s use of the disputed domain name’s resolving website. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The disputed domain name is confusingly similar to Complainant’s registered POKÉ marks, and its resolving website features Complainant’s mark to sell counterfeit products or Complainant’s products without authorization. Respondent registered the <poke.store> domain name on July 7, 2020, the panel notes, right around the time Complainant brough proceedings against Respondent with respect to his registration and use of the domain name <pokemon-store>. In that proceeding, Nintendo of America Inc. v. Christian Dahl / Konsolenprofis, FA1901915 (Forum July 23, 2020), the Forum panel granted the transfer of the domain and held that Respondent’s use of the domain name “to sell products that are counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use” and was evidence of bad faith.
This evidence establishes prima facie, that Respondent knew of Complainant’s marks when he registered the disputed domain name at the time he was already involved in proceedings for using Complainant’s marks. This conduct, in itself, amounts to bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant’s rights under Policy ¶ 4(a)(iii).
Respondent argues that it uses a disclaimer on the <poke.store> domain name’s resolving website. Past Panels have noted that use of a disclaimer on a disputed domain name’s resolving website does not always negate a finding of bad faith under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”). As the Panel has already noted, we have no evidence of the claimed disclaimer, but even if there were one, that is not sufficient in this case to mitigate a finding of bad faith under 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 <poke.store> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, QC Panelist
Dated: May 17, 2021
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