Nintendo of America Inc. v. banyong ruan / allen newell
Claim Number: FA1901001824278
Complainant is Nintendo of America Inc. (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is banyong ruan / allen newell (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3ds-flashcard.com>, <r4new3ds.com>, <sky3dsitalia.com>, registered with Chengdu Fly-Digital Technology Co., Ltd.; and <sky-3ds.com> and <new3dslinker.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2019; the Forum received payment on January 8, 2019.
On January 9, 2019, Chengdu Fly-Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <3ds-flashcard.com>, <r4new3ds.com>, and <sky3dsitalia.com> domain names are registered with Chengdu Fly-Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. On January 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sky-3ds.com> and <new3dslinker.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Chengdu Fly-Digital Technology Co., Ltd. have verified that Respondent is bound by their respective registration agreements 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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2019 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@3ds-flashcard.com, postmaster@r4new3ds.com, postmaster@sky3dsitalia.com, postmaster@sky-3ds.com, and postmaster@new3dslinker.com. Also on January 18, 2019, 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 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Nintendo of America Inc., is one of the best-selling video game developers in the world. Complainant has rights in the NINTENDO 3DS mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,106,294, registered Feb. 28, 2012). See Compl. Annex 3. Complainant also has common law rights in the 3DS mark. Respondent’s <3ds-flashcard.com>, <r4new3ds.com>, <sky3dsitalia.com>, <sky-3ds.com>, and <new3dslinker.com> domain names are confusingly similar to Complainant’s mark because Respondent includes the 3DS mark in each domain name, adds one or more generic terms to each domain name (“flashcard,” “r4,” “new,” “sky,” “italia,” and/or “linker”), and adds a “.com” generic top-level domain (“gTLD”) to each domain name.
ii) Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly known by the domain names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to solicit illegal devices, and then encourages users to download pirated versions of Complainant’s products to use on these illegal products.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith by registering five domain names confusingly similar to Complainant’s mark. Further, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the illegal products offered on the resolving domain. This use disrupts Complainant’s business. Further, Respondent had actual knowledge of Complainant’s rights in the NINTENDO 3DS mark prior to registering the disputed domain names.
B. Respondent
Respondent did not submit a response.
1. Respondent registered the domain names on the following dates: <3ds-flashcard.com> (July 27, 2013), <r4new3ds.com> (May 31, 2016), <sky3dsitalia.com> (May 21, 2016), <sky-3ds.com> (October 25, 2014), and <new3dslinker.com> (May 6, 2015).
2. Complainant has established rights in the NINTENDO 3DS mark based on its registration of the mark with the USPTO (e.g., Reg. No. 4,106,294, registered Feb. 28, 2012).
3. The resolving webpage associated with the disputed domain names displays Complainant’s products along with illegal devices and pirated versions of Complainant’s products.
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.”).
Preliminary Issue 1: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is capable of proceeding in English. First, two of the domain names are registered under English registration agreements. Moreover, one of the three domain names, <3ds-flashcard.com>, registered under a Chinese registration agreement, resolves to an English-based website, and purports to have a store located in the United States. See Compl. Annex 5. Additionally, all of the domain names use English words in the domain name (sky, new, flashcard), and none of the domain names use Chinese characters in the websites, the WHOIS information, or the domain names. Finally, Complainant is not fluent in Chinese and the burden to conduct proceedings in Chinese is high for Complainant.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case; in the absence of Response; and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
First, Complainant contends that although the <sky3dsitalia.com> and <sky-3ds.com> domain names were registered under different registrant names with different registrars, the two domain names were registered under the same IP address. See Compl. Annex 2. Second, Complainant claims that the registrant name for the <sky-3ds.com> and <new3dslinker.com> domain names, “allen newell,” is associated with YouTube channels that discuss and link to the <3ds-flashcard.com> domain name, which is registered under “banyong ruan.” Third, Complainant argues that the <3ds-flashcard.com>, <r4new3ds.com>, <sky3dsitalia.com> domain names, registered under “banyong ruan,” both link to the <rom2station.com> domain name, which has historically been registered under “allen newell.” See Compl. Annexes 5 and 13. Finally, Complainant claims that the content and layout of all five disputed domain names’ resolving webpages is nearly identical. See Compl. Annex 5.
The Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The Panel treats them all as a single entity in this proceeding. The Respondents will be collectively referred to as “Respondent.”
Complainant claims rights in the NINTENDO 3DS mark based on its registration of the mark with the USPTO (e.g., Reg. No. 4,106,294, registered Feb. 28, 2012). See Compl. Annex 3. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the NINTENDO 3DS mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <3ds-flashcard.com>, <r4new3ds.com>, <sky3dsitalia.com>, <sky-3ds.com>, and <new3dslinker.com> domain names are confusingly similar to Complainant’s mark because Respondent includes the 3DS mark in each domain name and adds one or more generic terms and a gTLD. Additionally, the Panel notes that Respondent adds a hyphen to the <3ds-flashcard.com> and <sky-3ds.com> domain names, and removes the term “NINTENDO” from its mark. Such changes are typically insufficient to defeat a claim of confusing similarity under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding Respondent’s <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy ¶4(a)(i).). Here, Respondent wholly incorporates the 3DS mark in each domain name, adds one or more generic terms (“flashcard,” “r4,” “new,” “sky,” “italia,” and/or “linker”), adds a hyphen to the <3ds-flashcard.com> and <sky-3ds.com> domain names, and adds a “.com” gTLD to each domain name. Therefore, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s NINTENDO 3DS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <3ds-flashcard.com>, <r4new3ds.com>, <sky3dsitalia.com>, <sky-3ds.com>, and <new3dslinker.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Banyong Ruan / Allen Newell” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the NINTENDO 3DS or the 3DS marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the marks in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the disputed domain names to solicit illegal devices, and then encourages users to download pirated versions of Complainant’s products to use on these illegal products. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage associated with the disputed domain names, which displays Complainant’s products along with devices which Respondent allegedly solicits in order for consumers to use Complainant’s products. See Compl. Annex 5. As such, the Panel holds that Respondent’s competing use of the disputed domain names provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
Complainant argues that Respondent’s use of the disputed domain names is illegal. Using a domain name for an illegal purpose can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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). Complainant claims that the devices offered for sale on the resolving webpages associated with the disputed domain names are illegal, as well as the pirated material which Respondent allegedly offers. See Compl. Annex 5. The Panel agrees that Respondent uses the disputed domain names for an illegal purpose.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent registered the disputed domain names in bad faith by engaging in cybersquatting. The registration of multiple confusingly similar domain names incorporating a complainants mark can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Here, Respondent registered five domain names all incorporating the 3DS mark. The Panel agrees that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).
Next, Complainant claims that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the illegal and competing products offered on the resolving domain. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also 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).”). The Panel recalls that Complainant’s provided screenshot of the resolving webpage associated with the domain names displays Complainant’s products along with devices which Respondent allegedly solicits in order for consumers to use Complainant’s products. See Compl. Annex 5. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent uses the disputed domains to engage in an illegal activity. Using a domain name for an illegal purpose can evidence bad faith. See Google Inc. v Domain Admin / Whois Privacy Corp., FA150400161605239 (Forum Mar. 22, 2015) (Respondent’s use of the at-issue domain name to aid illegal activities under Complainant’s trademark and thereby tarnish the GOOGLE mark also suggests Respondent’s bad faith.). Complainant avers that the devices offered for sale on the resolving webpages associated with the domain names are illegal, as well as the pirated material which Respondent allegedly offers. See Compl. Annex 5. As such, the Panel agrees that Respondent uses the disputed domain names in connection with an illegal activity, and thus the Panel holds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Moreover, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the NINTENDO 3DS and 3DS marks at the time of registering the disputed domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See 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). Complainant contends that Respondent’s knowledge can be inferred by Respondent’s use of the disputed domain names in connection with Complainant’s products, along with Complainant’s longstanding fame and use of the marks in commerce. The Panel infers due to the notoriety of the Complainant's mark and the manner of use of the disputed domain names that Respondent did have actual knowledge of Complainant’s mark, demonstrating 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 <3ds-flashcard.com>, <r4new3ds.com>, <sky3dsitalia.com>, <sky-3ds.com>, and <new3dslinker.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 18, 2019
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