WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nintendo of America Inc v. Pokemon

Case No. D2000-1230

 

1. The Parties

Complainant: Nintendo of America Inc of 4820 150th Avenue NE, Redmond WA 98052, USA

Respondent: Pokemon of 1030 Glendale Drive, Bridgenorth, Ontario k4h-3h5, Canada

 

2. The Domain Name and Registrar

Domain Name: pokemonpikachu.com

Registrar: Network Solutions Inc

 

3. Procedural History

The Complaint was filed on September 16, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case. Following indications that the matter might settle between the parties following an offer by the Respondent to cancel the domain name, the administrative proceeding was suspended at the request of the Complainant for 30 days, but reinstated at the request of the Complainant on October 17, 2000 when the Respondent refused to transfer the domain name to the Complainant.

The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No Response was filed by the Respondent. The Respondent is in default.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was November 29, 2000.

 

4. Factual Background

The Complainant is the owner of registered trademarks for POKEMON and PIKACHU in many countries worldwide.

 

5. Partiesí Contentions

A. Complainant

The Complainant states:

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. PIKACHU® is the most popular POKEMON® character. 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.

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.

There are over 150 POKEMON® characters, and each has a unique, arbitrary and fanciful name. PIKACHU®, a yellow mouse-like creature that shoots lightening bolts from his pink cheeks and has a lightening bolt as a tail, is one of the central and most popular POKEMON® characters. A special PIKACHU® edition of the POKEMON® video game was released on October 18, 1999, and has sold more than 4 million cartridges. More than 1 million cartridges were sold in the first two weeks after launch, making it the fastest selling Nintendo title of all time. PIKACHU® is a central character to the POKEMON® animated television program, which remains the #1 rated children's show. The short feature PIKACHU'S SUMMER VACATION was part of the box office hit POKEMON®: The First Movie. This movie grossed US $52 million during its first week in theatres. At the time of release, this was the largest grossing opening week for an animated feature film. Worldwide, the movie grossed more than US $100 million.

Complainant has applied for numerous trademark registrations for PIKACHU in the United States and in many other countries. PIKACHU is a registered trademark in over thirty countries, including Australia, Benelux, Chile, China, Denmark, France, Germany, Hong Kong, Japan, Mexico, Panama, Russia, Spain, Switzerland, United Kingdom, and the United States. In addition, Complainant has numerous trademark applications pending for the mark PIKACHU in many additional countries including Canada.

Complainant Nintendo also holds trademark registrations for the mark POKEMON® in Argentina, Austria, Benelux, Chile, China, Columbia, Denmark, Finland, France, Germany, Hong Kong, Mexico, New Zealand, Panama, Paraguay, Peru, Portugal, Spain, Switzerland, Taiwan, the United Kingdom, and the United States.

On April 7, 2000, more than two and a half years after POKEMON® video games and merchandise had been introduced in the United States and Canada, Respondent registered the Internet domain name, POKEMONPIKACHU.COM.

On June 22, 2000, Complainant sent Respondent a cease and desist e-mail concerning the POKEMONPIKACHU.COM domain name.

On July 7, 2000, after receiving no response, Complainant sent a cease and desist letter with a partially completed Registrant Name Change Agreement attached via International Courier. On July 18, 2000, the letter was returned to Complainant after multiple unsuccessful attempts at delivery.

The Registrant's Domain Name Is Confusingly Similar to the Nintendo's POKEMON® and PIKACHU® Trademark.

Complainant owns the registered and famous POKEMON® and PIKACHU® trademarks. The Respondent's domain name, POKEMONPIKACHU.COM wholly incorporates and is confusingly similar to Complainant's POKEMON® and PIKACHU® trademarks. It is well established that a user of a mark "may not avoid likelihood of confusion by appropriating another's entire mark and adding descriptive or non-distinct matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß23:50 (4th ed. 1998); See EAuto, L.L.C. v. Triple S. Auto Parts, No. D2000-0047 (WIPO Arbit. & Mediations Ctr. Mar. 3, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0022.html> ("When a domain name incorporates, in its entirety, a distinctive mark, that creates a sufficient similarity between the mark and the domain name to render it confusingly similar."); Microsoft Corp. v. Mehrotra, No. D2000-0053 (WIPO Arbit. & Mediations Ctr. Apr. 10, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0053.html> (a gTLD is an "irrelevant distinction which does not change the likelihood for confusion"). Moreover, in weighing the likelihood of confusion between two marks the court weighs similarities more heavily than differences. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999) (attached as Annex 20). Here, Respondent has taken the entire arbitrary and fanciful trademarks POKEMON® and PIKACHU® and used them both as its domain name. "The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights." Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, No. D2000-0477 (WIPO Arbit. & Mediations Ctr. Jul. 20, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0477.html>. Similarly, the addition of one world famous trademark to another world famous trademark does not create a new or different mark in which the Respondent has rights. It is clear that POKEMONPIKACHU.COM is confusingly similar to Complainant's POKEMON® and PIKACHU® trademarks.

Respondent Has No Rights or Legitimate Interests in pokemonpikachu.com.

Respondent has not used the domain name POKEMONPIKACHU.COM in connection with a bona fide offering of goods or services. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or service marks or to apply for, register, or use any domain name incorporating those marks. Respondent has no trademark or intellectual property rights in any form of the POKEMON® or PIKACHU® trademarks. See Sanrio Co. Ltd. v. Neric Lau, No. D2000-0172 (WIPO Arbit. & Mediations Ctr. Mar. 3, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0172.html> ("Respondent cannot be said to have legitimately chosen the SANRIOSURPRISES.COM domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondentís interests in the domain name cannot be said to be legitimate.").

The Respondent is not commonly known by the domain name pokemonpikachu.com.

Respondent has not made a legitimate noncommercial or fair use of the domain name POKEMONPIKACHU.COM. Currently, the POKEMONPIKACHU.COM domain name does not point to an active Web site.

Respondent Registered and is Using the Infringing Domain Names in Bad Faith.

Respondent's registration and use of the POKEMONPIKACHU.COM domain name clearly indicates bad faith. First, the words "POKEMON" and "PIKACHU" are arbitrary and fanciful and sufficiently unique that it is unlikely that the Respondent devised them on his own. Such trademark uniqueness, together with Respondent's wholesale incorporation of the POKEMON® and PIKACHU® trademarks creates a confusingly similar domain name and weighs in favor of finding bad faith. See Neuberger Berman, Inc., No. D2000-0323 (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 both the POKEMON® and PIKACHU® trademarks demonstrates bad faith. See, e.g., The Channel Tunnel Group Ltd. v. John Powell, No. D2000-0038 (WIPO Arbit. 7 Mediation Ctr. March 17, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0038.htm> (awareness of Complainant's mark at the time of registering confusingly similar domain name is evidence of bad faith). Here, Complainant has extensively used the POKEMON® and PIKACHU® trademarks in the United States and Canada since at least September 1998. Both the POKEMON® and PIKACHU® trademarks were extremely popular and well known, well before Respondent's April 7, 2000, registration of the POKEMONPIKACHU.COM domain name. In addition, prior to Respondent's registration of the POKEMONPIKACHU.COM domain name, Complainant was operating the official POKEMON® Web site with access from POKEMON.COM, PIKACHU.COM, and other domain names. (POKEMON.COM registered on January 8, 1998; PIKACHU.COM registered on February 24, 2000).

Regardless of the eventual operation of a Web site at the POKEMONPIKACHU.COM domain name, the Respondent's registration of the domain name prevents the Complainant and rightful trademark owner from using its marks in a corresponding domain name. Furthermore, any Web site operated by Respondent at the domain name POKEMONPIKACHU.COM will at a minimum create a likelihood of initial interest confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's Web site. The Respondent's improper and unauthorized registration and use of the POKEMON® and PIKACHU® names diverts persons seeking Nintendo's official Web sites. This initial interest confusion violates Nintendo's rights in its trademark. See Brookfield Communications, 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 Web site, that they have reached a site operated by someone other than the trademark owner, the infringing Web site will still have gained a customer by appropriating the goodwill of the trademark owner)

Fourth, the Respondent's failure to respond to Complainant's cease and desist e-mail, and Complainant's inability to deliver a hard copy cease and desist letter to Respondent as a result of Respondent's failure to provide current and updated contact information to the Registrar is evidence of Respondent's bad faith in registering and using the domain name. See CBS Broadcasting Inc. v. Edward Enterprises, No. D2000-0242 (WIPO Arbit. 7 Mediation Ctr. May 24, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0242.htm>; see also Network Solutions Inc.'s service agreement, ∂ 5 available at <http://www.networksolutions.com/legal/service-agreement.html> (registrant agrees to provide current, complete contact information and update the information as needed).

Fifth, permitting a Web site to remain empty after receiving Complainant's communications is evidence of bad faith. See Cortefiel, S.A. v. Javier GarcŪa Quintas, No. D2000-0141, (WIPO Arbit. 7 Mediation Ctr. Apr. 24, 2000) (http://www.wipo.int/amc/en/domains/decisions/html/d2000-0141.htm> (test is whether Respondent is acting in bad faith and "by allowing his page to remain empty after the Complainants communications, the Respondent is omitting any reference to a bona fide use of the domain name, and is confusing Web surfers or prospective customers of [Complainant] by depriving them of any indication that it has no relationship whatsoever to [Complainant] . . ."). Respondent's Web site is currently inactive, and on information and belief has never been active, although it briefly contained a advertisement and the statement "Welcome to pokemonpikachu.com!".

Taken together, Respondent's actions are clear evidence of its bad faith registration and use of the domain name, POKEMONPIKACHU.COM. See CBS Broadcasting Inc. v. Edward Enterprises, No. D2000-0242 (citing cases supporting a finding of bad faith where a Web site is currently inactive and stating that the examples of bad faith of paragraph 4(b) of the Policy are intended to be illustrative, rather than exclusive); ABF Freight System, Inc. v. American Legal, No. D2000-0185 (WIPO Arbit. 7 Mediation Ctr. May 9, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0185.htm> (inactivity by the Respondent may amount to the domain name being used in bad faith); Telestra Corp. Ltd. v. Nuclear Marshmallows, No. D.2000-0003 (WIPO Arbit. 7 Mediation Ctr. May 9, 2000) <http://www.wipo.int/amc/en/domains/decisions/html/d2000-0242.htm> (bad faith use may be inferred from strong marks of Complainant, Respondent's failure to respond, and Respondent's failure to provide accurate contact information to the Registrar). Here, the POKEMON® and PIKACHU® trademarks are undeniably world famous, Respondent has failed, despite repeated attempts by Complainant, to respond to Complainant's communications or cease its infringing activity, and Respondent has failed to provide updated, valid contact information to the Register of the domain name in violation of its registration agreement.

B. Respondent

The Respondent has not filed a Response and is in default.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A Identical or confusing similarity

It is prima facie obvious that the Domain Name incorporates and merely joins together the Complainantís POKEMON and PIKACHU marks in one domain name and, therefore, that it is confusingly similar to the Complainantís marks.

B Rights or Legitimate Interest of the Respondent

The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.

C Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including

(i) the Respondent has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or

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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

In the absence of a Response from the Respondent and given the highly distinctive and fanciful nature of the Complainantís POKEMON and PIKACHU marks, there appears to be no explanation other than that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its competing site, to disrupt the business of the Complainant and/or to profit by eventual sale of the name to the Complainant or another third party for profit. Further, the Respondent appears to have provided a false name "Pokemon" and false contact details to the Registrar such that communications to the Respondent have been returned unopened and communication with the Respondent has been difficult. Finally, the Respondent has sent e mails to the Complainant indicating that it will cancel the domain name registration, but refused to transfer it to the Complainant. While no reasons have been given for this approach, it is clear that the Respondent is not contending that it has any legitimate rights in the domain name. Accordingly, I find that the Respondent has registered and used the Domain Name in bad faith within the meaning of the Policy.

 

7. Decision

In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainantís trade marks and that the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.

Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name "pokemonpikachu.com" be transferred to the Complainant.

 

 


 

 

Dawn Osborne
Presiding Panelist

Dated: November 23, 2000