Nintendo of America Inc. v. Sandra Ballester
Claim Number: FA2203001988530
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is Sandra Ballester (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <romswitch.download>, registered with GoDaddy.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2022; the Forum received payment on March 16, 2022.
On March 17, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <romswitch.download> 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 March 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2022 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@romswitch.download. Also on March 22, 2022, 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 April 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it markets and distributes video game systems, software, and related products. Complainant’s products—including consoles and video games—have achieved widespread popularity and have made it famous throughout the world. Complainant marketed its first video game system in 1985 and has since released additional video game systems including its Switch system in 2017. Nintendo is widely recognized as one of the best-selling video game system developers in the world, and also one of the most famous international companies in the world. Complainant has registered trademark rights in the NINTENDO SWITCH mark through its registration of the mark in the United States in 2018, and common law trademark rights in the mark SWITCH dating back to 2017 for use in connection with video game systems, video games, and related accessories.
Complainant alleges that the disputed domain name is confusingly similar to its marks as it incorporates the dominant portion SWITCH of the NINTENDO SWITCH mark (and the common law mark SWITCH) in its entirety and merely adds the generic term “rom” (which stands for “read only memory”) along with the “.download” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use its marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial of fair use. Instead, the disputed domain name resolves to a webpage that offers illegal downloads of various pirated copies of Complainant’s games. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith as Respondent offers illegal downloads of various pirated copies of Complainant’s games. Respondent had actual knowledge of Complainant’s rights in its marks. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered trademark NINTENDO SWITCH and the common law trademark SWITCH and uses them to market video game systems, software, and related products. The marks are well known.
Complainant’s rights in its marks date back to, respectively, 2018 and 2017.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website displays Complainant’s marks and logo and offers illegal downloads of various pirated copies of Complainant’s games.
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”).
Complainant has registered trademark rights in the mark NINTENDO SWITCH. Furthermore, Complainant asserts common law rights in the mark SWITCH. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant provides evidence that it used the SWITCH mark in various promotional and advertising materials. Indeed, prior panels have found that Complainant owns common law rights to the SWITCH mark dating back to at least 2017. See Nintendo of America Inc. v. Dajana Shawn, FA1798791 (Forum Sept. 4, 2018) (transferring domain; finding Nintendo owns common law rights to the SWITCH mark); see also Nintendo of America Inc. v. Khoa Le / Switch Bounty, FA1886240 (Forum Mar. 27, 2020) (same); see also Nintendo of America Inc. v. Adrien Hemery, FA1892061 (Forum May 25, 2020) (same). Therefore the Panel finds that Complainant established common law rights in its SWITCH mark.
The disputed domain name incorporates the dominant portion SWITCH of the NINTENDO SWITCH mark (and the common law mark SWITCH) in its entirety and merely adds the generic term “rom” (which stands for “read only memory”) along with the “.download” generic top-level domain (“gTLD”). Such changes do not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Sandra Ballester”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The disputed domain name resolves to a webpage that offers illegal downloads of various pirated copies of Complainant’s games. This is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Nintendo of America Inc. v. Jinlong Wu, FA1955752 (Forum Aug. 17, 2021) (use of website to distribute “unauthorized versions” of Nintendo’s games “infringe[d] [Nintendo’s] copyrights and is illegal” and so did 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 also Pettigo Comercio Internacional Lda v. ********** / Study, FA1627362 (Forum Aug. 2, 2015) (finding that Respondent had no rights or legitimate interest in a domain name which provided links for internet users to illegally download content); see also Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015) (“Given that Respondent is using the disputed domain name to offer illegal content for download and streaming, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to offer illegal downloads and unauthorized versions of Complainant’s products. This may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See SAAVN, LLC. v. David Dhawan, FA1519621 (Forum Nov. 5, 2013) (finding bad faith use and registration because respondent’s websites provided free, illegal downloads, of music in direct competition with complainant’s music business); see also 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 indicates Respondent’s bad faith); see also CVS Pharmacy, Inc. v. Alexander Shedrin, FA1816288 (Forum Dec. 7, 2018) (finding that the respondent registered the domain name in bad faith since the domain name was being used in connection to selling illegal pharmaceutical products). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s marks and logo and offers for sale pirated versions of Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes 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 <romswitch.download> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 15, 2022
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