WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nintendo of America Inc. v. Fernando Sascha Gutierrez Case No. D2009-0434 1. The Parties
The Complainant is Nintendo of America Inc. of Redmond, Washington, United States of America, represented by Perkins Coie, LLP, United States of America.
The Respondent is Fernando Sascha Gutierrez of Calpe, Kazakhstan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2009. On April 3, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On April 3, 2009, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 20, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2009. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent's default on May 12, 2009.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 26, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is in the business of marketing and distributing video game systems, software and accessories. For one of the video game systems it distributes, the Complainant uses the trademark WII. The WII trademark is also used for the software and accessories used for the video game system. The Complainant also uses the trademark for other products such as bags, backpacks, clothing and chewing gum.
The Complainant indicates it is the holder of the following WII, WIIWARE, WII POINTS and WII POINTS CARD trademarks:
for on April 27, 2006 for class 30;
- WII, registered in the United States under number 3,443,095 on June 3, 2008 and applied for on April 27, 2006 for class 18;
- WII, registered in the United States under number 3,482,582 on August 5, 2008 and applied for on April 27, 2006 for class 16;
- WII, registered in the United States under number 3,494,185 on August 26, 2008 and applied for on April 27, 2006 for class 38;
- WII, registered in Japan under number 4992560 on September 29, 2006 and applied for on April 26, 2006 for classes 9, 16, 28 and 41;
- WII, registered in Japan under number 5014842 on January 5, 2007 and applied for on April 20, 2006 for classes 3, 14, 18, 20, 24, 25, 29, 30, 32, 35, 38 and 42;
- WII, registered in Japan under number 5036980 on March 30, 2007 and applied for on August 31, 2006 for class 9;
- WII, registered in the European Union under number 005422811 on March 13, 2008 and applied for on October 17, 2006 for classes 1-45;
- WII POINTS, registered in Canada under number TMA715,051 on May 23, 2008 and applied for on November 22, 2006;
- WII POINTS CARD, registered in Canada under number TMA715,050 on May 23, 2008 and applied for on November 22, 2006;
- WII, registered in the United States under number 3,443,076 on June 3, 2008 and applied;
- WII, registered in the United States under number 3,500,328 on September 9, 2008 and applied for on April 27, 2006 for class 9;
- WII, registered in the United States under number 3,522,756 on October 21, 2008 and applied for on April 27, 2006 for class 25;
- WIIWARE, registered in the United States under number 3,531,931 on November 11, 2008 and applied for on July 23, 2007 for class 9;
- WIIWARE, registered in the United States under number 3,531,932 on November 11, 2008 and applied for on July 23, 2007 for class 41.
The Complainant launched its WII video game system in late November, 2006 in the United States, and in early December of 2006 in Japan, Australia, and the United Kingdom of Great Britain and Northern Ireland. In 2007, launches in several other countries followed.
It is stated in the WhoIs records that Fernando Sascha Gutierrez, the Respondent in the current case, is the current holder of the disputed domain name , which was registered on September 10, 2007 with eNom, Inc.
The disputed domain name linked to a membership-only website, that purported to give “[a]cces to the fastests Wii game downloads on the Internet.” The website displayed the WII logo, the WII controller (i.e. a part of the video game system), and game characters of the Complainant's video games.
The website charged users either a trial membership fee of USD 10.00 or a permanent membership fee of USD 49.95 payable by credit card or through Paypal. Once a user became a member, the website stated that the user was given access to “the largest file networks on the planet” so that the user could access and download content, including pirated, illegal and unauthorized copies of Nintendo games, for the WII system. The site also provided information regarding “game cheats” for ways to improve performance and scoring for the Complainant's WII games.
The homepage of the website that was linked to the disputed domain name also contained a link to “affiliates”. This link connected to an “affiliates program” page that described how users could generate sales commissions by signing up with “15DaysC”. The page also contained a link for “UnlimitedWii Banners”.
The website also featured other content, such as movies for viewing on a standard computer. According to the FAQ section on the website, “movies are actually downloaded first to your computer and then transferred to your Wii. Once in your computer, you will be able to burn them to CD/DVD”.
On April 2, 2009, the Complainant filed a complaint, requesting the transfer of the disputed domain name . 5. Parties' Contentions A. Complainant
The Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the domain name in connection with a bona fide offering of services or a legitimate non-commercial use. Also, the Respondent has not been commonly known by the domain name, according to the Complainant.
Finally, the Complainant considers that the domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
Thus for the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. The 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.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant is the holder of the well-known WII trademark, that is used in connection with its video game system, video games and other products such as bags, backpacks, clothing and chewing gum, it is clearly established that there is a trademark in which the Complainant has rights.
The Panel considers the disputed domain name to be composed of the non-distinctive generic terms “unlimited” and “downloads” and a term identical to the WII trademark. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download”, because users typically download that complainant's software; International Business Machines Corporation v. Scot banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because “many Internet users would assume that the Domain Name identifies a website from which they can download software supplied by the Complainant”; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words ‘mail', ‘post', ‘fan' and ‘top50' to the word ‘POKÉMON' in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word ‘POKÉMON'; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo's POKÉMON marks and Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE.
The addition of the non-distinctive terms “unlimited” and “downloads” does nothing to reduce the confusing similarity of the disputed domain name with the Complainants well-known trademark. The disputed domain name is likely to make assume Internet users that the website that is linked to the domain name offers downloads supplied by the Complainant. Therefore, the Panel considers the disputed domain name to be confusingly similar with the Complainants trademark WII.
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the domain name in order to shift the burden of proof to the Respondent. (See: Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094 ; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110 ).
The Panel notes that the Respondent has not been commonly known by the domain name and that the Respondent has not acquired trademark or service mark rights. The Respondent's use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate non-commercial or fair use of the domain name.
The Respondent makes use of images of the Complainant's copyrighted game characters and the WII logo and a color scheme that is similar to the one used by the Complainant on its own website under website. On its website, the Respondent offers an “affiliates” program, intended to create “pay per click” revenue for its customers. The Panel considers the offering of such services not to be a bona fide offering of goods or services (see: Caesars World, Inc. v. Chester Vargas/Latin American Financial Holdings Group,WIPO Case No. D2005-0362, where the link to an affiliate program was held to be a factor in finding bad faith; MetaMachine, Inc. v. eDonkey Records & MP3-Zone,WIPO Case No. D2003-0420, where the use of a domain name to redirect consumers as part of an affiliate program was held as evidence of bad faith; A, Inc. v. Oluseyi Ikhizamah,WIPO Case No. D2002-1168, where the operation of an affiliate website was held as evidence of bad faith, because the respondent was profiting from the use of complainant's mark and Genzyme Corporation v. Keyword Marketing, Inc., NAF No. 1007979, where respondent's generation of pay-per-click revenue through the use of complainant's marks was held as evidence of bad faith).
The Respondent also offers unauthorized copies of the Complainant's products for sale and charges a one-time fee for customers to join the site. According to the Panel such use cannot be characterized as a non-commercial or fair use (See the Lime Wire LLC Case, supra, where the offering of unauthorized downloads of the Complainant's software was held as evidence of bad faith; Philip Morris USA, Inc. v. ADN HOSTING,WIPO Case No. D2007-1609, where the use of a mark in the domain name to confuse customers into buying counterfeit products was found as absence of legitimate rights and Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946, where the use of the Complainant's trademark to offer for sale, or to direct customers to the products of the Complainant's competitors, was found to be objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch' selling.
As a result, the Complainant has made a prima facie showing that the Respondent has no right or legitimate interest in the domain name. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the use of the domain name for intentionally attempting to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. (i) Bad Faith Registration
In the instant case, the Respondent most likely had knowledge of the Complainant's rights in the WII trademark at the moment he registered the disputed domain name, since the Complainant's trademark is a well-known and widely known trademark. The Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith at the moment of registration (See: Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith and BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that Respondent acted in bad faith when registering that disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”), suggested knowledge of Complainant's rights in the trademarks.
Since the Respondent must have had knowledge of the Complainant's rights in the WII trademark at the moment he registered the disputed domain name, and since the Respondent had no legitimate interest in the disputed domain name, it is established that the domain name was registered in bad faith. (ii) Bad Faith Use
Moreover it is established that the Respondent registered and used the disputed domain name, including the Complainant's well-known trademark, for the purpose of intentionally attracting users to the Respondent's website by suggesting that the Respondent's website is affiliated with or endorsed by the Complainant. The Respondent obtains commercial benefit through sign-up fees and through sales of pirated, illegal and unauthorized products. Such use constitutes bad faith according to paragraph 4(b)(iv) of the Policy (See also: Milwaukee Radio Alliance, L.L.C. v. WLZR FM LAZER 103,WIPO Case No. D2000-0209, where it was held that there was bad faith where a domain name holder seeks to create an “initial confusion on the part of Internet users with regard to the source” of the domain name and Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102, where it was held that Respondent was taking a free ride on the goodwill of Complainant's trademark through the use of a domain name aiming at creating traffic to its website).
These circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: June 8, 2009
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