WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NINTENDO OF AMERICA INC., v. THIS DOMAIN IS FOR SALE
Case No. D2000-1197
1. The Parties
1.1. The Complainant is Nintendo of America Inc., 4820 150th Avenue NE, Redmond, Washington 98052, U.S.A; represented by James R. McCullagh, of Perkins Coie, 1201 Third Avenue, 48th Floor, Seattle, Washington 98101-3099, U.S.A.
1.2. The Respondent is This Domain Is For Sale, Administrative Contact: David Edwards, The Best Domains, PO Box 5018, G.C.M.C., Bundall, Queensland 4217, Australia.
2. The Domain Name and Registrar
2.1. The Domain Name subject to this Complaint is "". The Registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, 20170, U.S.A.
3. Procedural History
3.1. The Complaint was received by email at the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) on September 9, 2000 and in hardcopy on September 12, 2000. The appropriate payment was made to the WIPO Center. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center on September 14, 2000.
3.2. A copy of the Complaint was sent by the Complainant�s representative to the Registrant and administrative contact for the contested Domain Name by express mail on September 9, 2000. A copy of the Complaint was sent by the Complainant�s representative to the Registrar of the Domain Name by courier on September 9, 2000.
3.3. On September 14, 2000, WIPO Center notified the Registrar, Network Solutions Inc., (NSI), of the Complaint. On September 15, 2000, verification was received from the Registrar of NSI to the effect that the Domain name "" is registered by that Registry in the name of This Domain Is For Sale (GAME-BOY2-DOM), with Administrative Contact and Billing Contact address recorded as: David Edwards (DE3580) sos@KEWL.COM.AU, The Best Domains, PO Box 5018, G.C.M.C., Bundall, Queensland 4217, Australia. The Domain Name registration was at that time in Active status. The Registrar stated that Network Solutions� 4.0 Service Agreement is in effect.
3.4. On September 18, 2000, a Complaint Deficiency Notification was sent by WIPO Center by email to the Complainant's representative stating that the Domain Name holder did not submit in its Registration Agreement to the jurisdiction of the courts at the principal office of the Registrar (NSI). On September 20, 2000, the Complainant's representative replied by fax and email to WIPO Center, copied by email to the Respondent and to the Registrar, with an Amendment to the Complaint in which it consents to the jurisdiction of the Courts at the location of the Domain Name holder's address with respect to any challenges to a decision in the administrative proceeding canceling or transferring the Domain Name.
3.5. On September 22, 2000, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Uniform Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Uniform Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
3.6. Formal Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent on September 22, 2000, by WIPO Center by email (Complaint with attachments; to "sos@" and to "Postmaster@") and via post/courier (with enclosures). The deadline for the receipt of a response was set as October 11, 2000. The Formal Notification was copied to the Complainant by email (with attachments) and to ICANN and to the Registrar, Network Solutions, Inc., (with attachments).
3.7. No formal Response was received by the due date and on October 14, 2000, a Notification of Response Default was sent by WIPO Center to the Respondent by email, and by post/courier; copied to the Complainant's representative by email.
3.8. On October 20, 2000, Dr Clive Trotman, having provided the WIPO Center by fax with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and the parties were so informed via post/courier and email to the Respondent and by email to the Complainant. The Administrative Panel was informed on the same date by email with a copy by courier. An electronic copy of the Complaint was emailed to the Administrative Panel on October 20, 2000, and the hardcopy of the Case File followed by courier.
4. Factual Background
4.1. The Domain Name "" was registered by the Complainant with NSI on April 15, 1998.
4.2. The Domain Name "", which is the subject of the Complaint, was registered with NSI by the Respondent on December 9, 1998.
4.3. The Complainant (Nintendo) certifies that its video game systems products and trademarks have become famous worldwide. In the United States, Nintendo video game systems are used in approximately 40% of all homes. One of these video game systems is the GAME BOY® portable, hand-held video game unit. The GAME BOY video game system, first released in 1989, can now play any one of more than 1,000 video games available on interchangeable plastic cartridges. More than 100 million units have been sold.
4.4. GAME BOY is a registered trademark in at least 26 countries. Nintendo also possesses registered trademarks for GAME BOY POCKET and GAME BOY COLOR. Applications for the trademark GAME BOY are pending in at least 13 countries. Twenty-seven annexes containing photocopies of registration documents were provided in support of this paragraph.
4.5. On August 8, 2000, the Complainant sent a cease and desist email to the Respondent at the email address listed for the Respondent's Administrative Contact and offered to reimburse the Respondent for its costs associated with the transfer of the Domain Name to the Complainant.
4.6. On August 20, 2000, the Respondent answered the Complainant's cease and desist email stating, "without predjudice" (sic), that the Domain Name was for sale for $US5,000, that the Respondent denied the use of any trademark related to Nintendo or Game Boy, that the Respondent acted as "resellers of the domain to anyone in the market place", that with the use of a hyphen between the word "game" and "boy", "This clearly differs from your trademark deeming this domain as generic."; and that "We treat this as a generic domain with relation to anyone playing games."
5. Parties� Contentions
A. Contentions of Complainant
5.1. The Complainant contends (paragraphs 5.2-5.7 below) that:
5.2. The Complainant has long-standing and settled rights and legitimate interests in the name GAME BOY. The Complainant owns and maintains the official GAME BOY web site at the Domain Name "".
5.3. The Respondent's Domain Name "" is identical with or confusingly similar to Nintendo's GAME BOY Trademark in which the Complainant has rights. The Respondent's addition of a hyphen between the two names of the Complainant's GAME BOY trademark does not reduce its confusing similarity with the Complainant's mark.
5.4. The Respondent has no rights or legitimate interests in respect of the Domain Name. The 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. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks. The Respondent has no trademark or intellectual property rights in the GAME BOY trademark. The Respondent has not claimed to be commonly known as Game Boy.
5.5. The Respondent registered and is using the Domain Name in bad faith. The Complainant contends that the Respondent should have been aware of the Complainant's mark and pre-existing Domain Name at the time of registering "", indicating bad faith. The Respondent offered to sell the "" Domain Name to the Complainant for $US5,000, being well in excess of its out-of-pocket registration costs. The Registrant's name, "This Domain Is For Sale", is evidence of the Registrant's bad faith intent to sell the Domain Name. The Registrant has made no use of the Domain Name. The registration of the Domain Name "" prevents the Complainant from using it to reflect its own trademark if it so wished.
5.6. The Respondent, trading as The Best Domains, has engaged in a pattern of conduct of the type contended in paragraph 5.5 above as a business engaged in registering and reselling domain names.
5.7. Remedies Requested. The Complainant requests that the Domain Name "" be transferred to the Complainant.
B. Contentions of Respondent
5.8. The Respondent has not submitted any formal Response.
6. Discussion and Findings
Whether the Domain Name is Confusingly Similar to Complainant's Trademark
6.1. The Domain Name that is the subject of the Complaint is "". The Complainant has submitted that " " is confusingly similar to its own trademark GAME BOY and Domain Name "".
6.2. The Complainant has cited previous WIPO Arbitration and Mediation Center Decisions in Chernow Communications Inc. v. Kimball, Case No. D2000-0119, M. Scott Donahey Presiding Panelist ("The majority of prior Panel decisions, which are consistent with United States Court decisions dealing with trademarks, have held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); in Columbia Sportswear Company v. Mahlon Keeler, Case No. D2000-0206, David Perkins Panelist ("The use of hyphens "columbia-sports-wear-company" in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY. The two are in all material respects identical."); and in Teradyne, Inc. v. 4Tel Technology, Case No. D2000-0026, Jordan S. Weinstein Panelist ("The addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."). Other WIPO Arbitration and Mediation Center cases have followed similar reasoning, but some have not.
6.3. Conversely Alan L. Limbury Panelist in Gateway, Inc. v. P, Inc., Case No. D2000-0109 said, "Where a trader uses a descriptive name as a trademark, only slight differences will suffice to distinguish another trader and its business from the first trader and its business."
6.4. The Administrative Panel finds on the facts of the present case that whereas the trademark GAME BOY comprises the common descriptive words "game" and "boy", those words in that form have acquired a secondary meaning as a proprietary thing. The Administrative Panel finds that the Respondent's Domain Name "" is virtually identical to the Complainant's trademark and Domain Name embodying that trademark and is confusingly similar. The Complainant therefore succeeds under element 4 (a) (i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of Domain Name
6.5. The Complainant has submitted that the Respondent does not have any rights to or legitimate interest in the Domain Name for reasons including those summarized in Section 5 above. The Respondent cannot have any rights in respect of the Domain Name because the Domain Name essentially incorporates the Complainant's GAME BOY trademark and the Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks, or to register or use any Domain Name incorporating those marks.
6.6. It is open to the Respondent to demonstrate in accordance with (but not limited to) Paragraph 4 (c) (i) or (ii) or (iii) of the Uniform Policy that it has rights to or legitimate interests in the Domain Name but the Respondent has not attempted so to demonstrate. On August 20, 2000, the Respondent answered the Complainant's cease and desist email by implying that the Domain Name was not being used. The Complainant annexed to its Complaint a printout dated September 22, 2000, of an attempt to contact the URL "" showing a response that amounted to the site not being in existence. The Respondent has not demonstrated a bona fide use of the Domain Name as it would need to do in terms of Paragraph 4 (c) (i) of the Uniform Policy. The Complainant certifies that on information and belief, Respondent's name or commonly known nickname is not Game-Boy as it would need to be under Paragraph 4 (c) (ii) of the Uniform Policy. The Respondent is not making a legitimate non-commercial or fair use of the Domain Name in order to qualify under Paragraph 4 (c) (iii) of the Uniform Policy since on the facts presented by the Complainant the Domain Name is in use only in so far as it is available for sale.
6.7. Having regard to the conclusions reached in 6.5 and 6.6 above and recognizing that the circumstances listed under Uniform Policy Paragraph 4 (c) are without limitation, and acknowledging that it is for the Complainant to prove its case, the Administrative Panel finds on the facts that the Respondent does not have any rights to or legitimate interest in the Domain Name. The Complainant therefore succeeds under Paragraph 4 (a) (ii) of the Uniform Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.8. Paragraph 4 (a) (iii) of the Uniform Policy requires the Complainant to demonstrate that the Domain Name has been registered and is being used in bad faith; and then lists four circumstances, Paragraphs 4 (b) (i), (ii), (iii) and (iv), any one of which in the alternative (but without limitation) "shall be evidence of registration and use of a domain name in bad faith".
6.9. The Complainant certifies and has annexed documentary evidence, among other matters: that the Respondent by email on August 20, 2000, stated that the use of a hyphen [and by implication, merely the hyphen] between the words "game" and "boy" distinguished the Respondent's Domain Name from the Complainant's trademark; that at the time the Respondent registered the Domain Name, the Complainant was already operating the "" Web site; that on August 20, 2000, the Registrant offered to sell the "" Domain Name to the Complainant for $US5,000, being well in excess of registration costs.
6.10. The Administrative Panel finds on the facts that in the terms of Paragraph 4 (b) (i) of the Uniform Policy the Respondent knew about the GAME BOY trademark when registering the "" Domain Name and that the Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a price in excess of registration costs. These findings are, in accordance with the preamble of Paragraph 4 (b) of the Uniform Policy, "For the purposes of Paragraph 4 (a) (iii) ... evidence of the registration and use of a domain name in bad faith". In order to resolve any potential conflict over the interpretation of the phrase "is being used" in Paragraph 4 (a) (iii) of the Uniform Policy, the Administrative Panel is satisfied that a Domain Name that is not in bona fide operation as a Web site is nevertheless in use while it is available for sale, rental or transfer or is being maintained in existence and thereby being used to prevent anyone else from registering the same. The Administrative Panel therefore finds the requirements of Paragraph 4 (a) (iii) to be satisfied in full and that the Domain Name was registered and is being used in bad faith.
6.11. Additionally the Administrative Panel has considered the facts certified by the Complainant to the effect that the Respondent's registration of the Domain Name prevents the Complainant from reflecting its trademark in a corresponding Domain Name and that the Respondent has engaged in a pattern of such conduct in its business as a reseller of domain names. The Administrative Panel finds in the terms of Paragraph 4 (b) (ii) of the Uniform Policy that the Domain Name was registered and is being used in bad faith, thereby satisfying the requirements of Paragraph 4 (a) (iii) independently of the finding in 6.10 above.
6.12. The Administrative Panel in WIPO Case No. D2000-0003 , Andrew F. Christie Presiding Panelist, developed a persuasive argument (Paragraphs 7.8 � 7.11 therein) to the effect that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith". In the present case the Administrative Panel finds clear evidence of bad faith on the part of the Respondent in, among other things: its registration of a Domain Name confusingly similar to the Complainant's which was already in use; its asking price of $US5,000 for the Domain Name; its pattern of conduct as "The Best Domains" being a reseller of domain names; the Registrant of the Domain Name being "This Domain Is For Sale"; and the Respondent's use of the Domain Name for no other apparent purpose than to be available for sale. The Administrative Panel finds that the totality of this conduct is evidence that the Domain Name was registered and is being used in bad faith under Paragraph 4 (a) (iii) of the Uniform Policy independently of the findings in 6.10 and 6.11 above.
6.13. To summarize, as stated in 6.4 above the Respondent's Domain Name "" is confusingly similar to a trademark in which the Complainant has rights and the Complainant succeeds under element 4 (a) (i) of the Uniform Policy. As stated in 6.7 above the Respondent does not have any rights to or legitimate interest in respect of the Domain Name and the Complainant succeeds under Paragraph 4 (a) (ii) of the Uniform Policy. As concluded in either 6.10 or 6.11 or 6.12 above the Domain Name was registered and is being used in bad faith and the Complainant succeeds under element 4 (a) (iii) of the Uniform Policy. The Complainant therefore has proven its case in full and the final Decision is made in favor of the Complainant and against the Respondent.
7. Decision
7.1. The Decision of the Administrative Panel is that the disputed Domain Name "" is confusingly similar to the trademark GAME BOY in which the Complainant has legitimate interests; that the Respondent has no rights or legitimate interests in the Domain Name ""; and that the Respondent has registered and is using the Domain Name "" in bad faith. The Decision of the Administrative Panel is that the Domain Name "" shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Sole Panelist
Dated: November 1, 2000
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