WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America, Inc. v. P, Jerry Radl, and Fusion Media Solutions, Inc.
Case No. D2001-1020
1. The Parties
Complainant is Nintendo of America, Inc., a Washington (USA) corporation with its principal office in Redmond, Washington USA, represented by Beth A. Colgin of Perkins Coie LLP, Seattle, Washington USA.
Respondents are Jerry Radl, an individual who resides in Layton, Utah USA, Fusion Media Solutions, Inc., a Utah (USA) corporation, and p, an entity whose provenance is unknown and may be fictitious. Radl is listed as the administrative and billing contact for the Domain Name (defined in the following section), p is listed as registrant, and the Whois database lists Fusion Media Solutions, Inc. at the same address as Radl.
2. The Domain Name and Registrar
The domain names at issue (the Domain Name) is
.
The registrar is Network Solutions, Inc.
3. Procedural History and Jurisdiction
The WIPO Arbitration and Mediation Center (the Center) received the complaint on August 13, 2001 (electronic and hard copy versions). The Center verified that the complaint satisfied the formal requirement 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). Complainant made the required payment to the Center.
On August 15, 2001, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case. The Registrar transmitted via email to the Center its Verification Response on August 16, 2001, confirming that the Respondent p is the registrant and that Respondent Radl is the administrative and billing contact for the Domain Name.
On August 17, 2001, the Center transmitted to the Respondents its Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail. Correspondence sent to the email addresses listed with the Registrar was returned as "undeliverable," but the courier's record indicates delivery to Respondents on August 20, 2001.
Respondents have not replied to the Complaint. On September 10, 2001, the Center notified Respondents Radl and p by email of their default, at the email addresses listed with the Registrar. These were returned as undeliverable, "host unknown."
The formal date of the commencement of this administrative proceeding is September 19, 2001.
Complainant requested a single panelist and Respondent did not opposed. The Center invited Richard G. Lyon to serve as a panelist. Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, on September 19, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of October 3, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy. Jurisdiction extends to all Respondents: because it is the registered owner, and Radl and Fusion Media Solutions, Inc. by virtue of service of the Complaint.
4. Factual Background
Complainant, a wholly owned subsidiary of Nintendo Co., Ltd., of Kyoto, Japan, is an international marketer and distributor of video games, software, and accessories. Some of its most famous products use the word Pokemon. Complainant and its affiliates own many trademarks based upon and incorporating this word around the world, including thirteen in the United States. Products sold or licensed by Complainant using this name are a world famous video game and related books, accessories, clothing, and (most important for purposes of this case) trading cards. Since its introduction in Japan in 1996 Pokemon products have grossed over $15 billion in sales. Complainant advertises heavily, using its names and marks, worldwide, and owns many domain names that include the word Pokemon. Complainant has not licensed Respondents to use its marks or its name.
Respondents registered the Domain Name on February 27, 2000. On February 11, 2000, Respondents registered with the Registrar. Shortly thereafter Respondents used both web sites to sell Pokemon-related merchandise, including trading cards, and posted a link to . In August, 2000 the format of this web site changed to include several advertisements, text immediately above the advertisements reading "[c]lick here to support us," an automatic link to a web site operated by Nexcite LLC (a company owned in part by Respondents), and a disclaimer of any affiliation with Complainant.
In June 2000, Complainant notified Respondents by email of the registration of , requesting cessation of such use and transfer of that domain name to Complainant. By email, Respondent Radl declined. Immediately following its discovery of the revised site, on August 4, 2000, Complainant's counsel again wrote to Respondents, again requesting transfer of the name. That same day Respondent Radl telephoned Complainant's counsel, confirming his ownership of the site and informing counsel of his ownership of the Domain Name. He confirmed his use of both sites to sell Pokemon merchandise, and advised counsel that he had received offers to sell the two domain names. He asked if Complainant would be interested in purchasing them. Counsel declined but offered to reimburse Respondents' cost of registration and transfer expenses in return for transfer of them to Complainant. Respondent Radl said that he would retain an attorney [1]. Neither Respondents nor anyone acting on their behalf ever contacted Complainant again.
Respondents deactivated their two websites in December 20, 2000, and the name was released in January 2001, enabling Complainant to acquire it. Complainant brings this proceeding to acquire the Domain Name.
5. Parties' Contentions
The parties' contentions may be summarized as follows:
Complainant:
The Domain Name incorporates its valuable mark. With a common word added to the mark and incorporated into the Domain Name, Respondents' use of the Domain Name is likely to cause confusion as to ownership or affiliation of the Domain Name. Respondent registered the Domain Name subsequently to Complainants products' gaining their worldwide popularity Complainant has not licensed Respondents, and none of the words in the Domain Names is associated with Respondents or any independent business of theirs; thus they have no legitimate interest in them. Bad faith is established by Respondents' knowledge of Complainant's mark, the timing of the registration of the Domain Name, an offer to sell the Domain Name for an amount in excess of their costs of registration, Respondents' sale of Complainants' products on the site using the Domain Name, and the liklihood � indeed certainty � of confusion with Complainant's web sites.
Respondents:
Respondents have not responded to the Complaint. The emails and report of telephone conversations between Respondents and Complainant's counsel submitted with the Complaint do not contain any arguments justifying Respondents' use of the Domain Names.
6. Discussion
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute:
"A Panel shall 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 directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect to the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each item. Respondent's default does not automatically result in judgment for the Complainant. The Panel will consider Respondents' emails submitted with the Complaint, although, as noted, these do not include any material response to the factual allegations or legal argument in the Complaint.
Identity and Confusion.
The Domain Name incorporates Complainant's popular product name and marks, and is therefore likely to cause confusion as to the ownership of the site. The addition of planet at the end of the Domain Name does not mitigate this confusion, as many panels have held. The disclaimer on the site likewise does not mitigate the confusion.
Legitimate Interest.
Nothing in the record suggests any legitimate interest of Respondent in the Doman Name. Complainant has not licensed Respondents to use its marks or sell its products, and there is nothing to indicate that Respondents are known by either Pokemon or planet. The record reveals only an illegitimate use, dependent upon unauthorised use of Complainant's mark.
Bad Faith.
By using the Domain Names to sell Complainant's products, Respondents have shown bad faith in use of the Domain Name. The format of the site (and the site) strongly suggests that they obtained "click-through" revenues from the site,[2] another improper use of the Complainant's mark for commercial purposes. See Policy, �4(b)(iv). While there is no direct evidence of bad faith in registration, that may be inferred from the timing of the registration � several years after the Pokemon name became famous, the lack of any legitimate connection between the mark and Respondents' business, and the subsequent unauthorised exploitation of Complainant's mark.
7. Decision
For the foregoing reasons, the Administrative Panel orders that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: September 25, 2001
Footnotes:
1. The substance of the telephone conversation is supported by sworn declaration submitted with the Complaint. Unlike many such declarations submitted by parties in these domain name proceedings, the declaration properly contained a recital of what was said, without conclusionary comments by the declarant. Respondent has submitted nothing that contradicts Complainant's version of the facts.
2. A web site owner is paid click-through advertising revenues from having visitors to a web site subsequently click on a link or banner advertisement which leads the visitor to a second web site. Shields v. Zuccarini, 89 F. Supp. 2d 634, 640 (E.D. Pa. 2000) (the latter reference includes the court's observation that use of a famous mark for click-through revenue is "exactly the type of conduct the [Anticybersquatting Consumer Protection Act] is designed to prevent"); see also Nokia Corp. v. N, WIPO Case No. D2000-0102 (click-through scheme described as a "free ride" on Complainant's marks). This sort of arrangement illustrates a reason why a web site owner might want a well known mark included in its domain name.
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