Nintendo of America Inc. v. rui ai
Claim Number: FA1801001766615
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is rui ai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2018; the Forum received payment on January 12, 2018.
On Jan 16, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2018 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@3dsflash.net, postmaster@oz-3ds.net, postmaster@3dsvilla.com, postmaster@topsky3ds.net, postmaster@3ds-cart.net, postmaster@3ds-town.com. Also on January 16, 2018, 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 February 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Nintendo of America Inc., 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 owns registrations for its world-famous NINTENDO mark and other famous marks, including multiple registrations NINTENDO 3DS and related marks with various trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,165,097, registered Jun. 26, 2012).
2. Complainant also has common law rights in the 3DS mark. The <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com>[1] domain names (collectively, the “Disputed Domain Names”) are confusingly similar to Complainant’s 3DS mark as they each contain the mark entirely, and add generic and/or descriptive terms and the “.com” or “.net” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the Disputed Domain Names because the WHOIS information of record indicates Respondent is not commonly known by the Disputed Domain Names. Further, Respondent is not an authorized dealer, distributor, or licensee of Complainant. Respondent is not making a bona fide offering of goods or services. Rather, Respondent’s use is illegal and directly aimed at harming Nintendo by marketing and selling devices for the purpose of infringing Complainant’s intellectual property rights.
4. Respondent registered and uses the Disputed Domain Names in bad faith as they are used for illegal purposes, to disrupt Complainant’s business, and show a pattern of bad faith. Additionally, Respondent had actual knowledge of Complainant’s rights to the 3DS mark at the time it registered and subsequently used the Disputed Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the 3DS mark. Respondent’s domain names are confusingly similar to Complainant’s 3DS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names and that Respondent registered and uses the domain names 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant further asserts common law rights in the 3DS mark. A complainant may establish common law rights to a mark through evidence of secondary meaning, which may be demonstrated by: 1) sales under the mark; 2) media and consumer recognition; 3) advertisement expenditures under the mark; or, 4) consumer surveys. See Blitz NV, LLC v. Tadeas Jilek, FA1641729 (Forum Nov. 26, 2015) (Secondary meaning is shown through evidence of: 1) sales under the mark; 2) media and consumer recognition; 3) advertisement expenditures under the mark; or, 4) consumer surveys.). Complainant has provided evidence that as of December 2016, it has sold more than 65 million video game consoles and more than 320 million games under the 3DS mark. Further, news articles and internet articles frequently use the 3DS mark to refer to Complainant’s goods and services. Two Forum panels have held Complainant has established common law rights in the 3DS mark. See Nintendo of America Inc. v. Alex Wang, et al., FA 1721638 (Forum May 3, 2017); see also Nintendo of America Inc. v. zhiquing yu, et al., FA 1748769 (Forum Oct. 30, 2017). Therefore, the Panel finds Complainant has established common law rights in the 3DS mark.
Complainant next argues the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names are confusingly similar to the 3DS mark. Incorporating a complainant’s mark entirely, and adding generic or descriptive terms and a gTLD to a domain name do not distinguish the resultant domain name from the mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Here, Disputed Domain Names each incorporate Complainant’s 3DS mark entirely, add the gTLD “.net” or “.com” and generic or descriptive terms such as “villa,” “flash,” “town,” “topsky,” or “cart;” or the geographically descriptive term “oz” (a nickname for Australia). The Panel agrees that the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names are confusing similar to the 3DS mark and so holds under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent is not commonly known by the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names. WHOIS information and a lack of evidence of authorization or license to use a mark can demonstrate a respondent is not commonly known by a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Based on the WHOIS information of record that Respondent is known as “Rui Ai” and that Complainant has not granted Respondent authorization to use the 3DS mark, the Panel finds Respondent is not commonly known by any of the Disputed Domain Names per Policy ¶ 4(c)(ii).
Complainant contends Respondent’s lack of rights or legitimate interests in the Disputed Domain Names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant has shown, instead, the names are used to market and sell devices whose sole purpose is to allow access to pirated content on Complainant’s devices. Complainant has provided evidence that Respondent uses the Disputed Domain Names to market and sell devices which infringe Complainant’s intellectual property rights by allowing internet users to download pirated 3DS games onto cards, which, inserted into Respondent’s illegal device, allows them to play the pirated 3DS games. This conduct, Complainant has shown, is illegal under U.S. law. See 17 U.S.C. §§ 501, 506, 1201. Use of a domain name containing the mark of another for an illegal purpose indicates a lack of rights under Policy ¶¶ 4(c)(i) and (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.”); 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. Thus, the Panel finds Respondent’s illegal use of the Disputed Domain Names is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent’s registration of the <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com> domain names is part of a pattern of bad faith registration and use. A respondent’s registration of multiple domain names that infringe on complainant’s mark can evidence a pattern of bad faith per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). By registering six domain names using the entire 3DS mark, Respondent has established a pattern of bad faith per Policy ¶ 4(b)(ii).
Complainant asserts Respondent disrupts Complainant’s business as it uses the Disputed Domain Names in bad faith to directly compete with Complainant. Bad faith use and registration may be demonstrated under Policy ¶¶ 4(b)(iii) and (iv) when a respondent’s resolving website creates confusion among Internet users and provides illegal and competitive downloads of a complainant’s goods or services. See Saavn, LLC. v. David Dhawan, FA 1518621 (Forum Nov. 5, 2013) (finding bad faith use and registration under Policy ¶¶ 4(b)(iii) and (iv) because respondent’s websites provided free, illegal downloads, of music in direct competition with complainants music business). Here, Complainant has provided evidence that the Disputed Domain Names sell game copiers enabling users to avoid buying Complainant’s 3DS games by facilitating internet piracy of free 3DS games. Additionally, the Panel accepts Complainant’s contention that Respondent’s use of Complainant’s own marks and logos on the resolving website causes consumer confusion per Policy ¶ 4(b)(iii).
Lastly, Complainant alleges Respondent must have had actual notice of Complainant's rights in the marks prior to registration and subsequent use of the domain names. The Panel agrees. Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Respondent’s involvement in a previous UDRP decision provided notice of Complainant’s complaint and the panel’s decision to the same e-mail address listed for the Respondent in this matter, <dthost@163.com>, indicates Respondent had actual knowledge of Complainant’s rights. Respondent’s use of the domain names to offer pirated products which can only be used with Complainant’s 3DS consoles further indicates this knowledge. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the 3DS mark and thus registered the Disputed Domain Names in bad faith.
The Panel finds Complainant has satisfied 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 <3dsflash.net>, <oz-3ds.net>, <3dsvilla.com>, <topsky3ds.net>, <3ds-cart.net>, and <3ds-town.com>, domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 17, 2018
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