Nintendo of America Inc. v. Dajana Shawn
Claim Number: FA1807001798791
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is Dajana Shawn (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <switchsx.com>, registered with Instra Corporation Pty Ltd.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 26, 2018; the Forum received payment on July 26, 2018.
On August 2, 2018, Instra Corporation Pty Ltd. confirmed by e-mail to the Forum that the <switchsx.com> domain name (the “Domain Name”) is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name. Instra Corporation Pty Ltd. has verified that Respondent is bound by the Instra Corporation Pty Ltd. 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 August 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 29, 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@switchsx.com. Also on August 9, 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 August 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 produces and distributes video game consoles and games world-wide. It launched its Nintendo Switch products in March 2017. Complainant has registered its NINTENDO SWITCH mark with several governmental trademark registration authorities, including the U. S. Patent and Trademark Office (USPTO). Its “NINTENDO SWITCH” logo was registered with the USPTO (Reg. No. 5,443,363) on April 10, 2018, and its standard mark NINTENDO SWITCH (Reg. No. 5,477,313) was so registered on May 22, 2018. In addition, Complainant has common law rights in the standalone SWITCH mark, based upon the world-wide notoriety of that product. Complainant sold more than 14 million Switch consoles and more than 50 million games for the SWITCH console in the first year it was offered. This demonstrates that Nintendo has established a secondary meaning for the SWITCH mark. Respondent’s Domain Name is confusingly similar to Complainant’s registered NINTENDO SWITCH mark because it incorporates SWITCH, as the dominant component of the mark, in its entirety. It also incorporates the entire SWITCH mark in which Complainant has established common law rights. It alters the SWITCH mark only by adding the letters “sx.”
Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not authorized or permitted to use Complainant’s mark in any fashion and is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses it to market and sell devices whose only purpose is to infringe Complainant’s intellectual property rights by permitting Respondent’s customers to play pirated Nintendo 3DS and Switch games, a practice which violates U. S. federal law.
Respondent registered and uses the Domain Name in bad faith. Respondent clearly knew of Complainant and its rights in the SWITCH mark when it registered the Domain Name. Further, Respondent’s use of the Domain Name to sell illegal products demonstrates bad faith registration and use. Finally, Respondent, who is competing with Complainant, is using the Domain Name to disrupt the Complainant’s business.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the issues involved in this proceeding:
Complainant registered its compound NINTENDO SWITCH mark with several governmental trademark agencies around the world, including the USPTO. Complaint Annex 3 is a chart listing Complainant’s registration of that mark. It shows that the mark was registered on September 20, 2017 in Chile (Reg. No. 1259412), on August 8, 2017 in Colombia (Reg. No. 571009), on June 19, 2017 in Mexico (Reg. No. 1764474), and on May 22, 2018 with the USPTO (Reg. No. 5,477,313). The NINTENDO SWITCH logo, which includes the words “Nintendo” and “Switch” written vertically within a square, was registered with the USPTO on April 10, 2017 (Reg. No. 5,443,363). Registration with trademark authorities around the world is sufficient to establish complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Additionally, Complainant asserts common law rights in the standalone SWITCH mark. Registration is not required to satisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”); 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 in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”); Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
In this case, Complainant has provided evidence of sales of Switch consoles (17.79 million units) and software used with them (68.97 million units). See, Complaint Annex 5. Complaint Annex 9 is an article that appeared in TIME magazine on February 6, 2017 in which senior Nintendo representatives spoke about the then soon-to-be-released SWITCH product. Complaint Annex 10 is an article that appeard in The Verge in June 2018 describing the success the Switch product has enjoyed since its release. This evidence fully supports Complainant’s claim of common law rights in the standalone SWITCH mark, and it is clear from this evidence that these rights arose almost immediately after the product was launched in March 2017, if not even before then.
Respondent’s Domain name is confusingly similar to Complainant’s compound NINTENDO SWITCH mark because it incorporates the dominant SWITCH component of the mark in its entirety, altering it only by adding the letters “sx” and the gTLD “.com.” The Domain Name is virtually identical to Complainant’s common law SWITCH mark, as it alters the mark only in the respects discussed just above. These changes are not sufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations did not negate confusing similarity under Policy ¶ 4(a)(i).). While Complainant does not specifically argue this, additions of a generic top-level domain (gTLD) are irrelevant under a Policy ¶ 4(a)(i) analysis. Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the NINTENDO SWITCH and SWITCH marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Name, (ii) it is not commonly known by the Domain Name, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to market and sell devices whose only purpose is to infringe a complainant’s intellectual property rights is illegal and thus not in good faith. These allegations are supported by competent evidence.
According to information furnished to The Forum by the registrar of the Domain Name, the registrant is “Dajana Shawn.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. 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).
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its SWITCH mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Annex 6 consists of screenshots of pages on the web site resolving from the Domain Name. These pages offer for sale devices which can be used to circumvent the security and copyright protection systems in the 3SD and Switch consoles produced and sold by Complainant. It is possible for Internet users to download pirated games onto cards which, when inserted into Respondent’s devices, allow them to play the pirated games. Complaint Annex 7 is a publication issued by Complainant and Annex 8 is the report of a senior software engineer at Complainant. These Annexes explain in detail how the devices offered on Respondent’s web site are utilized for the purposes described. They also explain that, in addition to circumventing the security systems in the devices themselves, they promote and facilitate the use of pirated versions of the game software. Both of these activities violate federal law and are thus illegal. The use of a Domain Name to promote illegal products or services is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii)). 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.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent’s use of the Domain Name as described above is clearly an attempt by it to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site and fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Additionally, it is evident from (i) Complainant’s world-wide standing in the electronics equipment industry, (ii) the close similarity between Complainant’s marks and Respondent’s Domain Name, and (iii) the fact that the products offered for sale on Respondent’s web site directly target Complainant that Respondent had actual knowledge of Complainant’s SWITCH mark on May 14, 2018, when it registered the Domain Name. See, Complaint Annex 2 for registration date. It designed not only the Domain Name but its entire business model as presented on the web site around the Nintendo Switch product. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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), 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.”).
Further, Respondent’s registration and use of the Domain Name for illegal purposes as discussed above constitutes evidence of bad faith registration and use in and of itself. Again considering the non-exclusive nature of Policy ¶ 4(b), numerous UDRP panels have stated the obvious. Autodesk Inc. v. Telecom Tech Corp, WIPO Case No. D2011-1670 (January 30, 2011) (“A respondent’s use of a disputed domain name to pursue an illegal activity automatically qualifies that domain as having been registered and used in bad faith.”), Cameron Thomaz P/K/A Wiz Khalifa and Wize Khalifa Trademark, LLC v. Kyle Lynch, WIPO Case No. 2014-1525 (November 4, 2014) (finding bad faith registration and use where respondent’s webpages offered illegal downloads of complainant’s music.).
Finally, inasmuch as Respondent is using the Domain Name to market and sell devices which enable users to avoid buying Complainant’s Switch games and instead to use pirated versions of them, it is competing directly with Complainant and seriously disrupting Complainant’s business by diverting sales of its games from Complainant to Respondent. This fits squarely within the circumstances set forth in Policy ¶ 4(b)(iii). Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchsx.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: September 4, 2018
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