WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nintendo of America Inc. v. Berric Lipson

Case No. D2000-1121

 

1. The Parties

The Complainant is Nintendo of America Inc., 4820 150th Avenue N.E.

Redmond, Washington 98052, United States of America.

Complainant is represented by: William C. Rava, Perkins Coie LLP, 1201 Third Avenue, 48th Floor, Seattle, Washington 98101, United States of America.

The Respondent is Berric Lipson, 230 Great Circle Road, Nashville, Tennessee 37228, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <pokemon-center.com>. The Registrar for the disputed domain name is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, United States of America.

 

3. Procedural History

This dispute was submitted for resolution in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on August 25, 2000. On August 29, 2000, the Center requested that the Registrar NSI check on the registrant for the domain name "pokemon-center.com". On August 31, 2000, NSI informed the Center that the registrant was the Respondent: Berric Lipson, 230 Great Circle Road, Nashville, Tennessee, 37228.

On September 19, 2000 the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began. Respondent did not file a response in this proceeding, and on October 13, 2000 was declared to be in default.

The Administrative Panel submitted a Declaration of Impartiality and Independence on October 17, 2000 , and the Center proceeded to appoint the Panel on October 19, 2000. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by November 1, 2000.

 

4. Factual Background

Complainant, Nintendo of America Inc., is a wholly-owned subsidiary of the Japanese corporation of the same name. They are the creators of the "Pokemon" characters and numerous products such as video games and toys using these characters. The first "Pokemon" character was created in 1996. Respondent registered the disputed domain name "Pokemon-Center.com" on April 11, 2000 and began showing at this web site advertising and entertainment clips using the "Pokemon" characters. On July 6, 2000 Complainant wrote Respondent asking that he cease operating his web site at the contested domain and transfer the domain name to Complainant. The parties have since ceased communicating, and Complainant is seeking transfer of the disputed domain name through this proceeding.

 

5. The Partiesí Contentions

Complainantís Contentions:

- Complainant owns the world-famous "Pokemon" trademark and "Pokemon" brand properties.

- Complainant markets and distributes "Pokemon" video games and licenses a wide range of "Pokemon" products, ranging from books to clothing and stuffed animals.

- Complainant has registered numerous trademarks based on "Pokemon" in the U.S. and around the world.

- On April 11, 2000 Respondent registered the disputed domain name <pokemon-center.com>. Respondent then began operating a website at this address that featured, among other things, several "Pokemon Galleries", detailed descriptions of the "Pokemon" movies, "Pokemon" downloads and a searchable database of each of the "Pokemon" characters. Many of the pages included a banner advertisement.

- On July 6, 2000 Complainant sent Respondent an e-mail requesting that he stop using the "Pokemon" trademark and transfer ownership to Complainant.

- Complainant further contends that Respondentís domain name is confusingly similar to Complainantís.

- According to Complainant, Respondent has not used the <pokemon-center.com> domain name in connection with a bona fide offering of goods and services. Complainant never authorized or sponsored Respondent to use the domain name.

- Respondent is in bad faith because he has used his confusingly similar domain name to attract visitors to his web site for commercial gain.

- Respondentís provision of inaccurate registration information suggests bad faith (Quixton Investments, Inc. v. Smithberger, WIPO Case No. D2000-0138).

- Finally, Complainant requests that the disputed domain name <pokemon.center.com> be transferred to Complainant.

 

6. Discussion and Findings

The Policy (paragraph 4(a)(i-iii) provides that the Complainant must prove the following in order to win transfer of the disputed domain name :

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name: and

- the domain name was registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant has produced copies of some of its "Pokemon" trademark registrations in the United States, for example, U.S. Trademark Registration no. 2,343,287 in international class 9; and U.S. Trademark Registration no. 2,297,050 in international class 9 (Complaint, Exhibit 7). Complainant also has registered its "Pokemon" trademark in many countries around the world such as China, Germany and the Benelux (Complaint, Exhibits 8-28). Respondentís domain name,<pokemon-center.com> comprises Complainantís trademark plus a generic term. Therefore, in accordance with prevailing U.S. and international trademark law, the Panel finds Respondentís domain name is confusingly similar to Complainantís famous trademark.

Respondentís Rights or Legitimate Interests in Respect of the Domain Name

Respondent has not provided a response and is in default in in this proceeding. The Complainant states it has not authorized or sponsored Respondent in its registration and use of Complainantís famous trademark as a domain name. This seems highly likely to the Panel under the circumstances.

The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.

 

The Domain Name Was Registered and Is Being Used in Bad Faith

The Panel has found two strong indications of Respondentís bad faith in registering the disputed domain name <pokemon-center.com>. Respondent was running banner advertising on the website using the disputed domain name. Hence, Respondent was taking advantage of the confusing similarity of his domain name to Complainantís famous trademark in order to make money, as proscribed by para 4 (b)(iv) of the Policy.

In addition, the Panel wholly agrees with Complainant that Respondentís providing false contact information, in an obvious attempt to remain elusive, is an indication of bad faith. Even though this particular instance of bad faith is not specifically enumerated in the Policy, the Panel believes the non-exclusive nature of para 4 (b) (i-iv) and Rule 15 allow the Panel to find bad faith in a case such as this. When Complainant wrote to Respondent the first time using the data furnished to NSI for domain name registration, the mail was returned as wrongly addressed. When Complainant wrote to the registered administrative contact for the disputed domain name the first time, Complainant received a response. Yet when Complainant wrote to the same administrative contact a few weeks later, the contact responded it no longer represented Respondent. It is clear to this Panel that Respondent intends not to be found in order to lengthen and frustrate any proceeding involving the disputed domain name.

The Panel finds Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

Therefore, in accordance with ICANN Policy para 4 (i) and Rule 15, the Panel orders that the disputed domain name <pokemon-center.com> be transferred to the Complainant, Nintendo of America Inc. The Respondent, Berric Lipson, registered this domain name even though it is confusingly similar to Complainantís famous trademark. And furthermore, Respondent had no right or interest in the domain name, and registered and was using the domain name in bad faith.

 


 

Dennis A. Foster
Sole Panelist

Dated: October 29, 2000