WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nintendo of America, Inc. v. Gray West International

Case No. D2000-1219

 

1. The Parties

Complainant is Nintendo of America, Inc. ("Complainant" or "Nintendo"), a Washington corporation with its principal place of business located at 4820 150th Avenue NE, Redmond, Washington 98052 USA. Complainant is a wholly owned subsidiary of Nintendo Co., Ltd. of Kyoto, Japan. For purposes of this Complaint, the interests of Complainant and its parent company are co-extensive.

Respondent is Gray West International ("Respondent" or "Gray West") located at 18467 Dragonera Drive, Rowland Heights, California 91748 USA.

 

2. The Domain Name and Registrar

The domain name at issue is "pokemon-games.com" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.

 

3. Procedural History

On September 19, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant.

On September 24, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

On September 26, 2000, the Center received an Amendment to Complaint

The Center verified that the Complaint with Amendment satisfies the formal requirements 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").

On September 27, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On October 25, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On November 27, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Complainant is in the business of marketing and distributing video game systems, software and accessories. As part of its business, Complainant owns the world-famous POKEMON® trademark and POKEMON® brand properties. Nintendo presently markets and distributes several POKEMON® video games and will continue to license a wide range of POKEMON® products, ranging from books to clothing to stuffed animals. The POKEMON® trademark and POKEMON® products have been widely advertised and extensively offered throughout the United States (and worldwide). According to independent national sales data, as a toy brand in 1999, POKEMON® was second only to the Barbie® brand in sales, ahead of the third place Star Wars® brand. The POKEMON® franchise grossed more than $1.8 billion in the United States in 1999, and is projected to generate more than $3.0 billion in 2000. Worldwide, the POKEMON® franchise has grossed more than $10 billion since the original Japanese introduction in February 1996. The POKEMON® trademark has become, through widespread and favorable public acceptance and recognition, world-famous and is an asset of substantial value to Complainant.

Nintendo has received the following 12 trademark registrations from the United States Patent and Trademark Office for the POKEMON® trademark:

Title

Class

Reg. Date

Reg. No.

Status

POKEMON

09

04/18/2000

2,343,287

R

POKEMON

09

11/30/1999

2,297,050

R

POKEMON

14

06/13/2000

2,358,726

R

POKEMON

16

06/13/2000

2,358,736

R

POKEMON

18

06/13/2000

2,358,727

R

POKEMON

20

06/13/2000

2,358,731

R

POKEMON

21

06/13/2000

2,358,728

R

POKEMON

25

06/13/2000

2,358,735

R

POKEMON

28

06/06/2000

2,356,298

R

POKEMON

28

06/13/2000

2,358,738

R

POKEMON

30

06/13/2000

2,358,737

R

POKEMON

41

07/27/1999

2,265,698

R

All of these trademark registrations are in full force and effect and are owned by the Complainant. Nintendo has not yet received the Certificates of Registration for the Class 16 and Class 18 registrations. Nintendo also holds trademark registrations for the mark POKEMON® in Argentina, Austria, Benelux, Chile, China, Colombia, Denmark, Finland, France, Germany, Hong Kong, Mexico, New Zealand, Panama, Paraguay, Peru, Portugal, Spain, Switzerland, Taiwan and the United Kingdom.

Among the most successful of the POKEMON® products are the video games designed for use with Nintendo's hand-held GAME BOY® video game system and the NINTENDO 64® home video game system. Nintendo currently sells many different POKEMON® games in the United States: POKEMON® Red & Blue, POKEMON® Yellow, POKEMON® Stadium, POKEMON® Pinball, POKEMON® Snap and POKEMON® Trading Card Game. More than 18 million POKEMON-related video games have been sold to date in the United States.

In many of the POKEMON® games, the player assumes the role of a POKEMON® trainer and travels through an imaginary world trying to collect specimens of each POKEMON® character. Once captured, the POKEMON® characters may be trained for battle, or traded with other players, or they may become friends. The goal of the POKEMON® games is to become the greatest POKEMON® trainer ever and to collect each POKEMON® character.

On August 18, 1999, almost an entire year after POKEMON® video games and merchandise had first been sold in the United States, Respondent registered the Internet Domain Name "pokemon-games.com" Respondent then began operating a website at "

www.pokemon-games.com

" that links to Respondent's commercial price comparison website at "

www.price-search.net

".

On March 30, 2000, Complainant sent Respondent a cease and desist email concerning the "pokemon-games.com" Domain Name. Respondent's administrative contact, Gary Gray, answered the letter by stating that the "

www.pokemon-games.com

" website gets enough traffic to "significantly hurt the online sales of [Complainant's] pokemon products" if removed from the Internet. Respondent then asked whether Complainant still wished to proceed with transferring the domain name. Complainant replied that it did indeed wish to proceed with transferring the domain name and further explained its position that the Respondent's use of the domain name infringed on Complainant's trademark rights in POKEMON®.

On April 10, 2000, Respondent responded that it was unwilling to transfer the domain name, but that it would place a disclaimer on its site.

On May 4, 2000, Complainant's outside counsel sent Respondent a cease and desist letter by United States certified mail. On May 22, 2000, Respondent responded refusing to stop its infringing activity and contesting the relevancy of Complainant's registered POKEMON® trademarks on its use of POKEMON in its Domain Name. Respondent also repeated its position that a disclaimer on its website cures the infringing activity.

 

5. Partiesí Contentions

Complainant contends that it has registered trademarks in POKEMON® and numerous variations. Complainant further contends that the Domain Name is identical with and confusingly similar to the POKEMON® marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

Respondent does not contest Complainantís assertion that it has registered marks in POKEMON ® or that the Domain Name is identical with and confusingly similar to the marks.

Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Name.

Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Even though Respondent has failed to contest the elements set forth in Paragraphs 4(a)(i) and (ii), the Sole Panelist will review each of the essential elements.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity

Complainant contends that it has registered trademarks in POKEMON®. Such trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the POKEMON® marks. 15 U.S.C. ß 1115. Respondent has failed to contest these contentions. Therefore, the Sole Panelist finds that Complaint has rights to the POKEMON® marks.

Complainant further contends that the Domain Name is identical with and confusingly similar to the POKEMON® marks.

Respondent has not contested the assertions by Nintendo that the Domain Name is confusingly similar to the POKEMON® marks.

Respondent's addition of "-games" to its domain name does nothing to reduce its confusing similarity with Nintendo's POKEMON® marks. Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, No. D2000-0477 (WIPO July 20, 2000) ("The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights."); Parfums Christian Dior v. 1 Netpower, Inc., No. D2000-0022 (WIPO March 3, 2000,) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); Chernow Communs., Inc. v. Kimball, No. D2000-0119 (WIPO May 18, 2000,) ("the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark).

Moreover in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communs, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

Therefore, consistent with prior ICANN decisions and well-settled trademark law, the Panelist finds that "pokemon-games.com" is confusingly similar to Complainant's POKEMON® marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the POKEMON® marks.

The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has offered no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) you have, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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

Respondent's answer to the Nintendo cease and desist letter of March 30, 2000, demonstrates knowledge by Respondent that it was attracting enough traffic to the "

www.pokemon-games.com

" website to "significantly hurt the online sales of [Complainant's] pokemon products" if removed from the Internet. In this statement, Respondent acknowledges the confusion being created as to product identity and shows the intent to direct traffic to Respondent through resolution of the Domain Name to a website controlled by Respondent. The reference to "online sales" is sufficient for the Panelist to infer that Respondent is acting for commercial gain. Therefore, the Panelist finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

The use of a disclaimer by Respondent is not sufficient to create a defense to bad faith under Paragraph 4(b)(iv) of the Policy. The Respondent's website and repeated use of Complainant's trademark POKEMON® in the title and source code of the "

www.pokemon-games.com

" website create a likelihood of initial interest confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's Web site. The title of the website "

www.pokemon-games.com

" states: "POKEMON TRADING CARDS, POKEMON GAMES, POKEMON VIDEOS, POKEMON". Even though a misdirected user may become aware that the "

www.pokemon-games.com

" website is not affiliated with the Complainant, the fact remains that the Respondent's improper and unauthorized use of the POKEMON® name diverts persons seeking Nintendo's official website. This initial interest confusion violates Nintendo's rights in its trademark. See Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion and noting that "Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership," and that even where people realize, immediately upon accessing the complained-of website, that they have reached a site operated by someone other than the trademark owner, the infringing website will still have gained a customer by appropriating the goodwill of the trademark owner).

The four criteria established by the Policy paragraph 4(b) are non-exclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

The word "POKEMON" is arbitrary and fanciful and sufficiently unique that it is unlikely that the Respondent devised it on its own. Such trademark uniqueness, together with Respondent's wholesale incorporation of the POKEMON® trademark with the generic term "games," creates a confusingly similar domain name and weighs in favor of finding bad faith. See Neuberger Berman, Inc., No. D2000-0323 (WIPO June 12, 2000,) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith); cf. Bigstar Entertainment, Inc. v. Next Big Star, Inc., 54 U.S.P.Q.2d 1685 (BNA) (2000) ("the more unique and inherently distinctive the mark, the stronger it is, and the greater the likelihood that the public may confuse a similar mark").

Second, that Respondent had notice of Complainant's rights in the POKEMON® trademark demonstrates bad faith. See, e.g., Channel Tunnel Group Ltd. v. John Powell, No. D2000-0038 (WIPO March 17, 2000,) (awareness of Complainant's mark at the time of registering confusingly similar domain name is evidence of bad faith). Here, Complainant had extensively used the POKEMON® trademark, and POKEMON® was extremely popular and well known, well before Respondent's August 18, 1999, registration of the "pokemon-games.com" Domain Name.

Complainant alleges that Respondent had actual knowledge of the Trademarks and their fame, and nevertheless proceeded to register the Domain Name. Complainant further alleges that Respondent had constructive knowledge of Complainantís prior rights in the Trademarks because of the registration of the POKEMON® marks. See, 15 U.S.C. ß 1072. Respondent does not contest these allegations. Actual or constructive knowledge of the Complainantís rights in the trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000,) (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

In Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name "cellularonechina.com". The WIPO panel agreed with Complainant, based on facts similar to those set forth in this Complaint, that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of "cellularonechina.com", because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ∂ 7. The Panelist concludes that, in the instant case, it is a likewise permissible inference to conclude bad faith use of the domain name since Respondentís domain name is composed entirely of Complainantís trademark and the impossibility of conceiving of a legitimate use of the Domain Name.

Moreover, despite Complainant's efforts to persuade Respondent to cease its unauthorized use of the POKEMON® trademark, Respondent has continued to violate Complainant's trademark rights.

Based upon this evidence, the Panelist concludes that in addition to the four nonexclusive criteria set forth in the Policy paragraph 4(b), the evidence supports a finding of Respondentís registration and use of the Domain Names in bad faith.

Therefore, based upon each of the foregoing grounds, the Panelist finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panelist concludes (a) that the Domain Name "pokemon-games.com " is confusingly similar to Complainant ís registered trademarks POKEMON®, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the Domain Name be transferred to Nintendo of America, Inc.

 


 

Richard W. Page
Sole Panelist

Dated: January 10, 2001