P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
Nintendo of America, Inc.
COMPLAINANT,
vs.
Beth Lizmi
DomainNamesHere.com
RESPONDENT.
DECISION
Domain Name Dispute
Forum File No. FA000300094329
The above-entitled matter came on regularly for an administrative hearing on April 20, 2000, before the undersigned, on the Complaint of Nintendo of America Inc., hereinafter "Complainant," against Beth Lizmi, DomanNamesHere.com, hereinafter "Respondent."
Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Names:POKEMON2000.COM
POKEMONS.COM
Domain Name Registrar:Network Solutions, Inc.
Domain Name Registrant:Beth Lizmi
DomainNamesHere.com
Dates of Domain Name Registration:January 28, 1999
September 28, 1999
Date Complaint Filed:March 20, 2000
Date of Commencement of
Administrative Proceedings in
Accordance with Rule 2(a) and
Rule 4(c):March 22, 2000
Due Date for a Response:April 12, 2000
After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter "The Forum," transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.
Respondent had registered the domain names in issue with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Uniform Domain Name Dispute Resolution Policy.
Respondent did not submit a purported Response to The Forum within twenty [20] days as required by Rule 5(a), or at all.
FINDINGS OF FACT
1.Complainant is the owner of the trademark POKEMON which was registered with the United States patent and Trademarks Office on July 27, 1999, and November 30, 1999, numbered 2,265,698 and 2,297,050, respectively.
2.Since September 1998, however, Complainant has used the POKEMON® trademark in connection with television programs in the field of children’s entertainment and has used the trademark in computer game software, electronic game programs, video game cartridges, and video game software since May 1998. The Complainant has also licensed the use of the POKEMON® trademark in connection with a broad variety of goods and services, including animated feature films, books, breakfast cereal, children’s toys, etc.
3.The POKEMON® franchise, including video games and officially-licensed merchandise, has generated more than $7 billion in worldwide revenues.
4.The Complainant also holds trademark registrations for the mark POKEMON® in Argentina, Austria, Benelux, Chile, China, Colombia, Denmark, Finland, France, Germany, Hong Kong, Mexico, New Zealand, Panama, Paraguay, Peru, Portugal, Spain, Switzerland, Taiwan, and the United Kingdom.
5.The Complainant has used its famous and distinctive mark continuously and extensively in interstate and international commerce.
6.Complainant has invested substantial sums of money in developing and marketing its mark and products.
7.On January 28, 1999, and on September 28, 1999, respectively, Respondent registered the domain names POKEMON2000COM, and POKEMONS.COM, long after Complainant’s adoption and first use of its mark.
8.Respondent’s domain names are nearly identical and confusingly similar to Complainant’s mark.
9.Respondent registered and used the domain names in issue in bad faith for the purposes of capitalizing on Complainant’s famous mark and, thus, it is not making a legitimate non-commercial or fair use of the domain names.
10.Respondent’s bad faith is demonstrated by its offer to sell the domain names to Complainant, after being warned of its wrongful actions.
11.Complainant’s prayer for relief seeks that the domain names be transferred from Respondent to Complainant.
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned has concluded based on the law, the rules and the findings of fact above set forth, as follows:
1.The domain names registered with Network Solutions by Respondent on January 28, 1999, and September 28, 1999, are substantially identical and confusingly similar to Complainant’s mark.
2.Respondent is not making a legitimate non-commercial or fair use of the domain names, for it clearly is seeking commercial gain by selling or attempting to sell the domain names.
3.Because trademark rights are acquired and maintained by actual use of the mark in commerce, unregistered marks are also protected under common-law principles. Complainant’s use of its mark long before Respondent’s registration, accordingly, establishes Complainant’s right to its mark, and allows it to stop infringement.
4.Respondent has acted in bad faith and with the intent to deceive.
DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
IT IS DIRECTED THAT THE DOMAIN NAME "POKEMON200.COM" AND "POKEMONS.COM" REGISTERED BY RESPONDENT Beth Lizmi, DomainNames here.com BE TRANSFERRED TO COMPLAINANT Nintendo of America Inc.
Dated: April 24, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.
__________________________________
IRVING H. PERLUSS