WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America, Inc. v. Gray West International
Case No. D2000-1219
1. The Parties
Complainant is Nintendo of America, Inc. ("Complainant" or "Nintendo"), a Washington corporation with its principal place of business located at 4820 150th Avenue NE, Redmond, Washington 98052 USA. Complainant is a wholly owned subsidiary of Nintendo Co., Ltd. of Kyoto, Japan. For purposes of this Complaint, the interests of Complainant and its parent company are co-extensive.
Respondent is Gray West International ("Respondent" or "Gray West") located at 18467 Dragonera Drive, Rowland Heights, California 91748 USA.
2. The Domain Name and Registrar
The domain name at issue is "" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
On September 19, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant.
On September 24, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
On September 26, 2000, the Center received an Amendment to Complaint
The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On September 27, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On October 25, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On November 27, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant is in the business of marketing and distributing video game systems, software and accessories. As part of its business, Complainant owns the world-famous POKEMON® trademark and POKEMON® brand properties. Nintendo presently markets and distributes several POKEMON® video games and will continue to license a wide range of POKEMON® products, ranging from books to clothing to stuffed animals. The POKEMON® trademark and POKEMON® products have been widely advertised and extensively offered throughout the United States (and worldwide). According to independent national sales data, as a toy brand in 1999, POKEMON® was second only to the Barbie® brand in sales, ahead of the third place Star Wars® brand. The POKEMON® franchise grossed more than $1.8 billion in the United States in 1999, and is projected to generate more than $3.0 billion in 2000. Worldwide, the POKEMON® franchise has grossed more than $10 billion since the original Japanese introduction in February 1996. The POKEMON® trademark has become, through widespread and favorable public acceptance and recognition, world-famous and is an asset of substantial value to Complainant.
Nintendo has received the following 12 trademark registrations from the United States Patent and Trademark Office for the POKEMON® trademark:
Title
Class
Reg. Date
Reg. No.
Status
POKEMON
09
04/18/2000
2,343,287
R
POKEMON
09
11/30/1999
2,297,050
R
POKEMON
14
06/13/2000
2,358,726
R
POKEMON
16
06/13/2000
2,358,736
R
POKEMON
18
06/13/2000
2,358,727
R
POKEMON
20
06/13/2000
2,358,731
R
POKEMON
21
06/13/2000
2,358,728
R
POKEMON
25
06/13/2000
2,358,735
R
POKEMON
28
06/06/2000
2,356,298
R
POKEMON
28
06/13/2000
2,358,738
R
POKEMON
30
06/13/2000
2,358,737
R
POKEMON
41
07/27/1999
2,265,698
R
All of these trademark registrations are in full force and effect and are owned by the Complainant. Nintendo has not yet received the Certificates of Registration for the Class 16 and Class 18 registrations. Nintendo 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.
Among the most successful of the POKEMON® products are the video games designed for use with Nintendo's hand-held GAME BOY® video game system and the NINTENDO 64® home video game system. Nintendo currently sells many different POKEMON® games in the United States: POKEMON® Red & Blue, POKEMON® Yellow, POKEMON® Stadium, POKEMON® Pinball, POKEMON® Snap and POKEMON® Trading Card Game. More than 18 million POKEMON-related video games have been sold to date in the United States.
In many of the POKEMON® games, the player assumes the role of a POKEMON® trainer and travels through an imaginary world trying to collect specimens of each POKEMON® character. Once captured, the POKEMON® characters may be trained for battle, or traded with other players, or they may become friends. The goal of the POKEMON® games is to become the greatest POKEMON® trainer ever and to collect each POKEMON® character.
On August 18, 1999, almost an entire year after POKEMON® video games and merchandise had first been sold in the United States, Respondent registered the Internet Domain Name "" Respondent then began operating a website at "
www. " that links to Respondent's commercial price comparison website at "
".
On March 30, 2000, Complainant sent Respondent a cease and desist email concerning the "" Domain Name. Respondent's administrative contact, Gary Gray, answered the letter by stating that the "
www. " website gets enough traffic to "significantly hurt the online sales of [Complainant's] pokemon products" if removed from the Internet. Respondent then asked whether Complainant still wished to proceed with transferring the domain name. Complainant replied that it did indeed wish to proceed with transferring the domain name and further explained its position that the Respondent's use of the domain name infringed on Complainant's trademark rights in POKEMON®.
On April 10, 2000, Respondent responded that it was unwilling to transfer the domain name, but that it would place a disclaimer on its site.
On May 4, 2000, Complainant's outside counsel sent Respondent a cease and desist letter by United States certified mail. On May 22, 2000, Respondent responded refusing to stop its infringing activity and contesting the relevancy of Complainant's registered POKEMON® trademarks on its use of POKEMON in its Domain Name. Respondent also repeated its position that a disclaimer on its website cures the infringing activity.
5. Parties� Contentions
Complainant contends that it has registered trademarks in POKEMON® and numerous variations. Complainant further contends that the Domain Name is identical with and confusingly similar to the POKEMON® marks pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
Respondent does not contest Complainant�s assertion that it has registered marks in POKEMON ® or that the Domain Name is identical with and confusingly similar to the marks.
Respondent failed to contest Complainant�s assertion that Respondent has no rights or legitimate interest in the Domain Name.
Respondent failed to contest Complainant�s assertion that Respondent registered and used the Domain Name in bad faith.
6. Discussion and F
