The Complainant is Nintendo Co., Ltd, Japan, represented by Allen & Overy LLP, France.
The Respondent is Trinh Viet Hung, PVN, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2020. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 7, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. On January 12, 2021, the Center transmitted an email to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on January 15, 2021. Respondent did not comment on the language of the proceeding. The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 25, 2021. 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. On February 25, 2021, Complainant forwarded a decision rendered by the Center on January 6, 2021 whereby the Center found in favor of Complainant with regard to a similar disputed domain name. Nintendo Co., Ltd v Enzo Real,WIPO Case No. 2020-2988 (transferring Complainant manufactures and sells throughout the world video game consoles and video games that can be played on said consoles using the mark “Wii”. Over the years, the game consoles have included “Wii”, “Wii Mini” and “Wii U”. As of December of 2019, Complainant had sold 101.64 million units of Wii worldwide since its launch in 2006 (34 million units in Europe alone) and over 921.69 million units of the associated video games. Complainant owns numerous trademark registrations for the word mark, and coined term, WII, including European Union Trade Mark No. 005087796, registered on August 5, 2008 and European Union Trade Mark No. 005422811, registered on March 13, 2008. Complainant also owns registrations for the domain names Respondent registered the Disputed Domain Name on February 10, 2018. At the time of the filing of the Complaint, the Disputed Domain Name led to a website in English making available unauthorized copies of Complainant’s copyrighted video games while using Complainant’s art and trademarks. The website is also monetized via an ads campaign, as well as links to various donations methods for the website owner. 5. Parties’ Contentions A. Complainant Complainant contends that the Disputed Domain Name is virtually identical and confusingly similar to Complainant’s WII mark. According to Complainant, the addition of the word “game” in the Disputed Domain Name makes no difference, as it is a non-distinctive, generic term that when used in association with Complainant’s WII mark, will be directly understood to indicate a place where Wii games/consoles can be found. Complainant also asserts that Respondent is not commonly known by “wii” or any variations thereof and that Complainant has not authorized or licensed Respondent’s use of Complainant’s mark. Additionally, Complainant contends that Respondent is using the Disputed Domain Name in bad faith, as evinced by the ability to download or utilize for free pirated and unauthorized copies of Complainant’s video games and other copyrighted material on Respondent’s website. Complainant alleges that Respondent has monetized its website via ads as well as links to various donation methods in an effort to benefit from misdirected consumers and those seeking to unlawfully download Complainant’s video games for free. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Paragraph 11(a) also states that the determination of the language of the proceeding is “subject to the authority of the Panel […], having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement is Vietnamese. The Complainant submitted its Complaint in English, and requested English be the language of the proceeding. The Panel notes that the Disputed Domain Name includes the word “game” and the website at the Disputed Domain Name is in English. Accordingly, the Panel accepts the Complainant's request for English to be the language of this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. B. Identical or Confusingly Similar The Panel finds that Complainant has established its rights in the WII mark by way of its European Union Trade Mark registrations. The Disputed Domain Name is confusingly similar to the Mark. The addition of the term “game” (the descriptive word for the nature of Complainant’s products) does not dispel the confusing similarity. See WIPO Overview 3.0, section 1.8. Complainant has satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not rebutted. Respondent’s use of the Disputed Domain Name in connection with a website that offers for free Complainant’s counterfeit copyrighted material and which is also monetized via an ads campaign, as well as links to various donations methods for the website owner, is not a bona fide use and can never confer rights or a legitimate interest. See WIPO Overview 3.0, section 2.13. Moreover, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Panel finds that Respondent registered the Disputed Domain Name in bad faith. Respondent’s knowledge of Complainant is manifest given that Respondent used Complainant’s WII mark and a descriptive term in its domain name while making available unauthorized products affiliated with Complainant and Complainant’s on its website. See WIPO Overview 3.0, section 3.2.1. The Panel also finds that Respondent’s fraudulent use of art, trademarks, and products affiliated with Complainant together with the monetization via an ads campaign, as well as links to various donations methods for the website owner, demonstrate bad faith use. See WIPO Overview 3.0, section 3.4. Where, as here, there are undenied allegations with supporting evidence that Respondent is making fraudulent use of the Disputed Domain Name by offering illegitimate and counterfeit products pertaining to the Complainant, then Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Lawrence K. Nodine
Sole Panelist
Date: March 11, 2021
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