Nintendo of America Inc. v. dima hna
Claim Number: FA2205001995856
Complainant is Nintendo of America Inc. ("Complainant"), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is dima hna ("Respondent"), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freenintendoswitch.com>, registered with Porkbun 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2022; the Forum received payment on May 10, 2022.
On May 11, 2022, Porkbun LLC confirmed by email to the Forum that the <freenintendoswitch.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 May 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@freenintendoswitch.com. Also on May 17, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 June 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 has marketed and distributed video game systems, software, and related products since 1985. Complainant owns longstanding trademark registrations for NINTENDO in the United States and other jurisdictions worldwide. Complainant began promoting a forthcoming game system under the NINTENDO SWITCH mark on or before October 20, 2016, and applied for a United States registration for the mark on that date; the registration issued in May 2018. Complainant asserts that both NINTENDO and NINTENDO SWITCH are world-famous marks.
Respondent registered the disputed domain name <freenintendoswitch.com> via a privacy registration service on October 20, 2016. The domain name is being used for a website that prominently displays Complainant's marks and offers illegal downloads of pirated copies of Complainant's games. Complainant states that Respondent is not commonly known by the domain name and is not authorized to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <freenintendoswitch.com> is confusingly similar to its NINTENDO and NINTENDO SWITCH marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <freenintendoswitch.com> incorporates Complainant's registered NINTENDO SWITCH trademark, omitting the space and adding the generic term "free" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Nintendo of America Inc. v. banyong ruan / 1989 / Alain Lebrun, FA 1907416 (Forum Sept. 22, 2020) (finding <free-switch.com> confusingly similar to NINTENDO SWITCH); Nintendo of America Inc. v. Jack Lavoire, FA 1878557 (Forum Feb. 5, 2020) (finding <nintendoswitch-shop.com> confusingly similar to NINTENDO SWITCH). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered marks without authorization, and its sole apparent use has been to promote pirated versions of Complainant's software. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Nintendo of America Inc. v. banyong ruan / 1989 / Alain Lebrun, supra (finding lack of rights or interests in similar circumstances); Nintendo of America Inc. v. Khoa Le / Switch Bounty, FA 1886240 (Forum Mar. 27, 2020) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's NINTENDO SWITCH mark (on the same day that Complainant filed its trademark application), and is using the domain name to promote pirated versions of Complainant's software. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Nintendo of America Inc. v. banyong ruan / 1989 / Alain Lebrun, supra (finding bad faith based upon use of domain name incorporating Complainant's marks to promote pirated versions of Complainant's products); Nintendo of America Inc. v. Khoa Le / Switch Bounty, FA 1886240 (Forum Mar. 27, 2020) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freenintendoswitch.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 14, 2022
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