Nintendo of America Inc. v. ya dou
Claim Number: FA2205001996932
Complainant is Nintendo of America Inc. ("Complainant"), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA. Respondent is ya dou ("Respondent"), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <switch520.net>, registered with OpenTLD B.V.
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 18, 2022; the Forum received payment on May 18, 2022.
On June 2, 2022, OpenTLD B.V. confirmed by email to the Forum that the <switch520.net> domain name is registered with OpenTLD B.V. and that Respondent is the current registrant of the name. OpenTLD B.V. has verified that Respondent is bound by the OpenTLD B.V. 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 June 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@switch520.net. Also on June 7, 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 July 6, 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. In 2017 Complainant released the Nintendo Switch system, in connection with which it uses the NINTENDO SWITCH and SWITCH marks. Complainant owns trademark registrations for NINTENDO SWITCH in the United States and other jurisdictions. Complainant also claims common law rights in SWITCH, having sold more than 100 million consoles and more than 750 million games since it launched the Nintendo Switch system. A Google search for "switch" returns results almost exclusively related to Complainant, and Complainant's common law rights in the SWITCH mark have been recognized in previous decisions under the Policy. See, e.g., Nintendo of America Inc. v. Khoa Le / Switch Bounty, FA 1886240 (Forum Mar. 27, 2020); Nintendo of America Inc. v. Dajana Shawn, FA 1798791 (Forum Sept. 4, 2018).
Respondent registered the disputed domain name <switch520.net> in October 2021, apparently via a privacy registration service. The domain name is being used for a website that distributes infringing copies of Complainant's copyrighted works (specifically, Nintendo Switch games) and contains banner advertisements. Complainant states that Respondent is not commonly known by the domain name and is not an authorized dealer, distributor, or licensee of Complainant. Complainant notes also that it prevailed in separate proceeding under the Policy involving the same Respondent and a similar domain name (<switch520.com>) that was being used for nearly identical purposes. See Nintendo of America Inc. v. Ya Dou, FA 1988534 (Forum Apr. 25, 2022).
Complainant contends on the above grounds that the disputed domain name <switch520.net> is confusingly similar to its NINTENDO SWITCH and 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 Panel recognizes Complainant's common law trademark rights in SWITCH based upon the evidence of substantial use and recognition provided by Complainant. The disputed domain name <switch520.net> incorporates that mark, adding the number "520" and the ".net" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Nintendo of America Inc. v. Ya Dou, FA 1988534, supra (finding <switch520.com> confusingly similar to SWITCH and NINTENDO SWITCH); eBay Inc. v. Du Hongxia/Liu Yujiao/WHOIS AGENT, DOMAIN WHOIS PROTECTION SERVICE, D2014-2015 (WIPO Jan. 7, 2015) (finding <ebay520.net> confusingly similar to EBAY); LEGO Juris A/S v. Yuewei Wang, D2011-1920 (WIPO Feb. 13, 2012) (finding <lego520.net> confusingly similar to LEGO). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
For substantially the same reasons as those set forth in Nintendo of America Inc. v. Ya Dou, FA 1988534, supra, 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.
For substantially the same reasons as those set forth in Nintendo of America Inc. v. Ya Dou, FA 1988534, supra, the Panel finds that Complainant has sustained its burden of proving 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 <switch520.net> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 6, 2022
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