Nintendo of America Inc. v. Mehmet Cayirovali
Claim Number: FA2004001892054
Complainant is Nintendo of America Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, United States. Respondent is Mehmet Cayirovali (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <switchbunker.com> and <dlswitch.com>, registered with Name.com, Inc..
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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2020; the Forum received payment on April 14, 2020.
On April 16, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <switchbunker.com> and <dlswitch.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 April 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2020 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@switchbunker.com, postmaster@dlswitch.com. Also on April 21, 2020, 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 May 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant markets and distributes video game systems, software, and related products. Complainant has rights in the NINTENDO SWITCH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,477,313 April 10, 2018). Complainant owns common law rights to the mark SWITCH alone. Nintendo has sold more than 50 million SWITCH consoles and more than 300 million games for the Nintendo SWITCH. Respondent’s <switchbunker.com> and <dlswitch.com> domain names are confusingly similar to Complainant’s NINTENDO SWITCH and SWITCH marks. Respondent incorporates the dominant portion of the mark and adds the generic words “bunker” or “dl.”
Respondent has no rights or legitimate interests in the <switchbunker.com> and <dlswitch.com> domain names as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names to sell unlicensed and unauthorized copies of Complainant’s products for one domain, and for an inactive site for the other domain.
Respondent registered and used the <switchbunker.com> domain name in bad faith as Respondent attempts to sell unlicensed and unauthorized copies of Complainant’s products. Respondent’s <dlswitch.com> domain name resolves to an inactive webpage. Respondent had actual knowledge of Complainant’s rights in the NINTENDO SWITCH and SWITCH marks prior to the registration of the disputed domain names.
B. Respondent
Respondent failed to submit a response to this proceeding. The Panel notes that the <switchbunker.com> domain name was registered on August 8, 2019 and the <dlswitch.com> domain name was registered on June 9, 2019.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the NINTENDO SWITCH mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the NINTENDO SWITCH mark (Reg. No. 5,477,313 April 10, 2018). Therefore, the Panel finds that Complainant has adequately shown rights in the NINTENDO SWITCH mark per Policy ¶ 4(a)(i).
Additionally, Complainant asserts common law rights in the standalone SWITCH mark. Registration is not required to satisfy Policy ¶ 4(a)(i). Common law rights in a trademark can be established by evidence of secondary meaning, which may be 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. Gourmet Dept 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.”
In this case, Complainant has provided evidence of sales of SWITCH consoles (50 million units) and software used with them (300 million units). The evidence supports Complainant’s claim of common law rights in the standalone SWITCH mark. See similarly Nintendo of America Inc. v. Dojame Shawn, FA 1798791) (Forum Sept. 4, 2018) (finding that Nintendo owns common law rights to the SWITCH mark).
Complainant argues that Respondent’s <switchbunker.com> and <dlswitch.com> domain names are confusingly similar to Complainant’s SWITCH mark. Registration of a domain name that consists of a mark and adds generic words does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Here, Complainant argues that Respondent incorporates the mark SWITCH and adds the generic words “bunker” or “dl” (standing for download). Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant argues Respondent lacks rights or legitimate interest in the <switchbunker.com> and <dlswitch.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Respondent been given license or consent to use the NINTENDO SWITCH mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Mehmet Cayirovali,” and there is no other evidence to suggest that Respondent was authorized to use the SWITCH mark or was commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the <switchbunker.com> name to sell unlicensed and unauthorized copies of Complainant’s products. Use of a disputed domain name to offer unauthorized or unlicensed versions of a complainant’s product is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant has provided screenshots of Respondent’s web site resolving from the <switchbunker.com> domain name that show advertisement and links to products related to Complainant. The <dlswitch.com> web site resolves to an inactive web site. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶¶ 4(a)(ii) of the Policy.
Complainant argues that Respondent registered and used the <switchbunker.com> domain name in bad faith as Respondent attempts to sell unlicensed and unauthorized copies of Complainant’s products. Use of a disputed domain name to sell unauthorized versions of a complainant’s product may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Here, Complainant has provided screenshots of the web site resolving from that domain name that show advertisement and links to products related to Complainant. Therefore, the Panel finds that Respondent registered and used the <switchbunker.com> in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent’s <dlswitch.com> domain name resolves to an inactive webpage. Use of a disputed domain name to resolve to an inactive webpage may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided a screenshot of the resolving web site that shows that the webpage cannot be found. Therefore, the Panel finds that Respondent registered and used the <dlswitch.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SWITCH mark prior to the registration of the disputed domain names. Here, Complainant has provided evidence that demonstrates the fame associated with its SWITCH mark. Further, Respondent displays the NINTENDO SWITCH and SWITCH marks on its <switchbunker.com> web site. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark, which constitutes bad faith per Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <switchbunker.com> and <dlswitch.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 28, 2020
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