WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America, Inc. v. Daniel Lopez dba Creative Strategies
Case No. D2000-1166
1. The Parties
Complainant is Nintendo of America, Inc., a Washington corporation with its principal place of business 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 Creative Strategies is a fictitious business name of Daniel Lopez who is located at 17730 NW 67 Avenue, #516, Miami, Florida 33015 USA.
2. The Domain Name and Registrar
The domain name at issue is "" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar"), 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Amended Complaint of Complainant on September 1, 2000. The Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On September 18, 2000, after sending 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 Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint 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 20, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On October 12, 2000, the Center received Respondent�s Response in hardcopy. The Response was written in Spanish. The Center acknowledged receipt of the Response on October 15, 2000, and received an electronic copy of the Response via email on October 17, 2000.
On October 17, 2000, Complainant communicated with the Center regarding the language of the Response being in Spanish.
On November 8, 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. The Sole Panelist reads English and Spanish.
4. Factual Background
Complainant is the owner of the famous NINTENDO mark (U.S. Registration Nos. 1,497,674 and 1,628,966), for which it acquired federal trademark registrations on July 26, 1988 and December 25, 1990, respectively. In addition, Complainant holds incontestable U.S. Registration No. 1,213,822 for the NINTENDO mark, as well as numerous other United States registrations. Complainant also holds trademark registrations for the mark NINTENDO in at least 58 countries, including Argentina, Austria, the Bahamas, Benelux, Brazil, Canada, China, Denmark, Finland, France, Hong Kong, Japan, Mexico, New Zealand, South Africa, Spain, Switzerland and the United Kingdom. Complainant markets a highly successful line of video game products. These marks shall be collectively referred to as the "NINTENDO Marks." In Japan, Complainant's parent company has operated under the Nintendo name for more than 50 years. In the United States, Complainant has distributed, promoted and licensed entertainment products using the NINTENDO name for more than 20 years. Nintendo video game systems are used in approximately 40% of all homes in the United States.
The domain name "" was initially registered on January 19, 2000, by Banners Factory, 8025 NW 90 St, Miami, Florida 33166 USA. On February 9, 2000, Daniel Lopez was listed in the Registrar�s Whois database as the Administrative Contact for "". The Domain Name was transferred on or about May 9, 2000, when Respondent became the registrant of the Domain Name. Daniel Lopez remained the Administrative Contact, and his contact address was the same as that listed for the prior registrant, Banners Factory. Respondent then attempted to sell the domain name to Complainant for an undisclosed amount in excess of the registration fee. Despite Complainant's efforts to persuade Respondent to cease its unauthorized use of the NINTENDO Marks, Respondent has refused to transfer the Domain Name.
Daniel Lopez admits that Banners Factory and Creative Strategies are names, which he uses for business. He denies having any conversation with a representative of Complainant in which he offered to sell the Domain Name to Complainant.
Daniel Lopez declares that he has used the domain name "V" to make actual sales of Nintendo products. He has not used the Domain Name "" for any commercial purpose pending the outcome of this administrative proceeding. His intention is to sell Nintendo products through his various websites. He further declares that he is acting in good faith toward Nintendo and will make no negative references regarding Nintendo. His intention is to promote Nintendo products. He does not intend to attract Internet users by misleadingly suggesting that he is associated with Complainant.
Daniel Lopez states his willingness to allow Complaint to pre-approve any content with may be posted on the website to which the Domain Name will resolve.
5. Parties� Contentions
Complainant contends that it has registered trademarks in the United States and internationally in NINTENDO. Complainant further contends that the Domain Name is identical with and confusingly similar to the NINTENDO 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 Names in bad faith in violation of the Policy paragraph 4(a)(iii).
Respondent has not contested Complainant�s assertion that Complainant has trademarks in NINTENDO or that the Domain Name is confusing similar to the asserted trademarks.
Respondent has not contested Complainant�s assertion that Respondent has no rights or legitimate interest in the Domain Name.
Respondent contests Complainant�s contention that the registration and use of the Domain Name is in bad faith.
Respondent requests that the Sole Panelist find reverse hijacking by Complainant. Respondent alleges that 750 domain names exist on the Internet which contain the phrase "nintendo" and that Complainant has shown no interest in the past in the domain names "" or "". The present case is only one of two, which Complainant has filed in the year 2000, with the Center seeking to enforce its rights in the NINTENDO Marks. Respondent asserts that this demonstrates selective enforcement of trademark rights, supporting Respondent�s claim of reverse hijacking.
Respondent asserts that ruling for Complainant will create a monopoly and a restraint of trade by taking away the customer�s right to choose among alternative sources of Nintendo products. Respondent asserts the name "nintendo" has become generic and constitutes a general reference to video games.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant contends that it has registered trademarks in the United States and internationally in NINTENDO. Respondent does not contest this assertion.
Complainant further contends that the Domain Name "" is identical with and confusingly similar to the NINTENDO Marks pursuant to the Policy paragraph 4(a)(i).
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998). Here, Respondent's "" domain name is confusingly similar to the NINTENDO marks because it incorporates the name "nintendo" in its entirety. Respondent's addition of the non-distinctive "i-" to its domain name does nothing to reduce its confusing similarity with Complainant's NINTENDO marks. See, Nike, Inc. v. Farrukh Zia, ICANN Case No. D2000-0167 (holding "" and "" to be confusingly similar to Complainant Nike, Inc.'s mark NIKE and its primary domain name NIKE.COM "[t]he only difference between the Domain Name and Complainant's mark is the 'e', a difference that the Panel holds in this case to be insignificant"); International Data Group, Inc. v. Maruyama & Co., Ltd., WIPO Case No. D2000-0420 (June 26, 2000) ("Since the Respondent's Domain Name differs from the Complainant's marks only by the addition of the now common 'E-', there is considerable likelihood of confusion of the Domain Name with the Complainant's business."); World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) (transfer of domain name to holder of trademark WWF); Yahoo! Inc. v. Zviely, WIPO Case No. D2000-0273 (June 14, 2000) (transfer of various domain names, including "" to holder of trademark YAHOO!); Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 (May 9, 2000) ("The addition of a hyphen to the registered mark is an insubstantial change.").
See also, EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000) ("When a domain name incorporates, in its entirety, a distinctive mark, that creates a sufficient similarity between the mark and the domain name to render it confusingly similar."); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (March 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).
The difference between the Domain Name "" and Complainant's NINTENDO Marks is insubstantial. Therefore, the Panel finds that the Domain Name is identical with and confusingly similar to the NINTENDO Marks owned by Complainant pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainant for the use of the NINTENDO Marks.
The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Name:
(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 for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant alleges that Respondent has not used the Domain Name "", or a name corresponding to this Domain Name, in connection with a bona fide offering of goods and services. Ziegenfelder Co. v. VMH Enterprises, Inc., WIPO Case No. D2000-0039 (March 14, 2000) (Failure to use the domain name to provide a product or service demonstrates Respondent has no rights or legitimate interest in the Domain Name).
Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the domain name. Complainant further alleges that Respondent has not developed any content for the "www." website, which currently appears to be unused.
Complainant alleges further that Respondent is not commonly known by the name or nickname of "."
Respondent has offered no evidence in support of any of the three methods provided in the Policy paragraph 4(c).
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 who 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 website 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 website or location or of a product or service on your website or location.
Complainant alleges that Respondent's bad faith is evidenced by (1) its offer to sell the Domain Name to Complainant for an amount in excess of the registration fee, and (2) Respondent's failure to use or develop any content for the Domain Name or the "www." website.
Respondent contests complainant�s allegations that Respondent offered to sell the Domain Name.
The amount of the supposed offer to sell is undisclosed as is the person to whom the offer was purportedly made. The Sole Panelist finds that the evidence presented by Complainant is not sufficient to prove that such an offer to sell was made. Therefore, the Sole Panelist finds that Complainant has not shown bad faith under the Policy paragraph 4(b)(i).
Complainant has not offered evidence of bad faith under the Policy paragraphs 4(b)(ii)-(iv).
The methods provided in the Policy paragraphs 4(b)(i)-(iv) are nonexclusive. Other factors alone or in combination may establish bad faith in the registration and use of a domain name.
First, Complainant has registered its NINTENDO Marks worldwide. The "" Domain Name was first registered in February 2000 several years after Complainant had established rights in its NINTENDO Marks, and when Complainant's marks were well known worldwide. See, The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000) (Respondent's awareness of complainant's mark when he registering the domain name at issue supported an inference of bad faith).
Second, an inference of bad faith is supported by the Respondent's failure to develop or use the "" Domain Name and the "www." website. In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D00-0004 (February 16, 2000) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business"); Telstra Corp., Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); Ingersoll-Rand Co. v. Gully, WIPO Case No. D2000-0021 (March 9, 2000) ("[U]nder the proper facts and circumstances even inaction can constitute 'bad faith' use"). In the present case, the Domain Name was registered on January 19, 2000. The Domain Name has not yet been used for any legitimate purpose. The lack of any legitimate, good faith use suggests bad faith.
Therefore, the Panel finds that Complainant has shown sufficient facts to establish bad faith pursuant to the Policy paragraph 4(a)(iii).
Additional Defenses
Respondent has asserted additional defenses including that Complainant (1) has selectively enforced its trademark rights, (2) has monopoly rights, (3) has engaged in a restraint of trade and (4) has allowed the phrase "nintendo" to become generic. The Sole Panelist finds that these defenses are beyond the scope of this administrative proceeding. In addition, the Sole Panelist observes that the Policy does not provide authority for such defenses in this administrative proceeding.
Reverse Hijacking
Complainant has prevailed on its claim and, therefore, has not engaged in reverse hijacking.
7. Decision
The Panel concludes (a) that the Domain Name "" is identical with and confusingly similar to the NINTENDO Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Nintendo of North America, Inc.
Richard W. Page
Sole Panelist
December 8, 2000
Full & Egal Universal Law Academy