WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nintendo of America, Inc. v. Garrett N. Holland et al

Case No. D2000-1483

 

1. The Parties

Complainant is Nintendo of America, Inc. ("Complainant" or "Nintendo"), a corporation incorporated under the laws of the State of Washington, with a principal place of business located at 4820 150th Avenue NE, Redmond, Washington 98052 USA

Respondent is Garrett N. Holland ("Respondent" or "Holland"), also named as butterfree.com, dodrio.com, fearow.com, flareon.com, mrmime.com, nidoqueen.com, omanyte.com, raticate.com, rhyhorn.com, venomoth.com, vileplume.com, located at 23 Vance St., New Britain, Connecticut 06052 USA.

 

2. The Domain Names and Registrar

The domain names at issue shall be collectively referred to hereinafter as (the "Domain Names") are identified as follows:

<butterfree.com>

<dodrio.com>

<fearow.com>

<flareon.com>

<mrmime.com>

<nidoqueen.com>

<omanyte.com>

<raticate.com>

<rhyhorn.com>

<venomoth.com>

<vileplume.com>

The registrar is Registrars.com, Ltd (the "Registrar") located at 475 Sansome Street #570, San Francisco, CA USA 94111.

 

3. Procedural History

On October 31, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 2, 2000, the Center received hardcopy of the Complaint. On November 9, 2000 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 10, 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 November 16, 2000, the Center notified the Complainant of deficiencies in the Complaint. On November 17, 2000, the Center received an Amended Complaint from Complainant.

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 November 23, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Amended Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On December 13, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On December 29, 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-member 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.

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 original POKEMON® characters. Each has a unique, arbitrary and fanciful name. BUTTERFREETM, DODRIOTM, FEAROWTM, FLAREONTM, MRMIMETM, NIDOQUEENTM, OMANTYETM, RATICETM, RHYHORMTM, VENOMOTHTM and VILEPLUMETM (the "Character Name Marks") are all characters featured in POKEMON® games and merchandise.

On November 22, 1999, more than one year after POKEMON® video games and merchandise had been introduced and had become extremely popular, Respondent registered the Domain Names. In March, 2000, Complainant sent Respondent emails demanding that he stop using the Domain Names. Respondent did not reply. On August 4, 2000, Complainantís counsel sent individual letters to Respondent, again demanding that he stop using Complaintís trademarks and asking him to transfer the Domain Names to Complainant.

On August 11, 2000, Respondent sent an email entitled "Pokemon Domain Names" to 42 registrants of more than 130 domain names, each of which incorporates a POKEMON® character name trademark. For example, the domain names registered by the recipients of this email all consisted of a character name, plus ".com", ".org", or ".net", such as BEEDRILL.COM. In this email, Respondent explained that Complainant had contacted him about transferring the Domain Names and expressed an interest in learning how others planned to "[deal] with Nintendo and its lawyers." Respondent wrote that Complainant offered to reimburse him for any notary fees incurred, and that he believes Complaint should "at least offer the $70 per name that [he] paid to register them."

Five days later, Respondent sent an email to Complainantís counsel, acknowledging receipt of Complaintís correspondence and offering to sell the Domain Names to Complaint for a total of approximately $2556 - $100 each for nine domain names, plus approximately $359 and $1297 for <butterfree.com>and <mrmime.com> respectively. Respondent asserted that those two domain names "have other clearly [sic] possible uses" and were, therefore, worth a "premium."

Respondent further claimed that he intended to use the Domain Names for "fan pages" and that he never intended to profit from them. No actual use of the Domain Names has been shown.

Complainantís counsel rejected Respondentís offer. Instead, counsel again advised Respondent that he was infringing Complainantís intellectual property rights and requested the transfer of the Domain Names. Complainant offered to reimburse Respondent for his reasonable, documented, out-of-pocket registration expenses and notary fees. Respondent has not responded to this correspondence.

 

5. Partiesí Contentions

A. Complainant contends that it has common law trademarks in the Character Name Marks. Complainant further contends that the Domain Names are identical with and confusingly similar to the Character Name Marks pursuant to the Policy paragraph 4(a)(i).

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

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

B. Respondent failed to contest Complainantís assertion that it has common law marks in the Character Name Marks or that the Domain Names are identical with and confusingly similar to the Character Name Marks.

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

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

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles the Panelist 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 Sole Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Sole Panelist 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 file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

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.

United States trademark law recognizes the existence of common law trademarks. See, e.g. 15 U.S.C. ß 1125. Likewise, prior ICANN and WIPO cases accept common law trademarks, provided that the Complainant can show that the mark has acquired secondary meaning or association with Complainant. See, Julia Roberts v. Russell Boyd (WIPO Case No. D2000-0210). Complainant can show that a mark has acquired secondary meaning by having been used for so long and so exclusively by one merchant with reference to the particular article that in that trade and to the particular branch of the purchasing public, the word or phrase has come to mean that the article was the product of the merchant in question. See, Broadway Trading, LLC v. Gene Weissman, ICANN Case No. FA 94310; 402 Shoes Inc dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-0223; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (May 11,2000); Bennett Coleman & Co. Ltd. v. Lalwani, WIPO Case No. D2000-0014 (March 11, 2000); Monty and Pat Roberts, Inc. v. Keith, WIPO Case No. D2000-0299.

See also McCarthy on Trademarks and Unfair Competition '13:2 (4th ed. 2000). Secondary meaning is the consumers association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991) (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use. Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).

Complainant asserts that it has enforceable common law trademarks in the Character Name Marks because of its extensive marketing and advertising of the POKEMON® marks and the Character Name Marks in a wide range of goods and services and because of the inherent distinctiveness and the wide recognition of the Character Name Marks.

Respondent has not contested the assertions by Nintendo that it has valid common law trademarks in the Character Name Marks. Therefore, the Sole Panelist finds that Nintendo has valid common law trademarks in the Character Name Marks.

Complainant further contends that the Domain Names are identical with and confusingly similar to the Character Name Marks pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Nintendo that the Domain Names are confusingly similar to the Character Name Marks.

The Sole Panelist notes that the entirety of one of the character names is included in each of the Domain Names with the addition of the generic top-level domain ("gTLD") name ".com".

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998). See, Monty and Pat Roberts, Inc. v. Keith, WIPO Case No. D2000-0299 (the addition of a generic top-level domain ("gTLD") name ".com", ".org" or ".net" is likewise without legal significance since the use of gTLDís is required of domain name registrants). See also, Microsoft Corp. v. Mehrotra, WIPO Case No. D2000-0053

See also, EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000) ("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."); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (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); Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") 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 Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

Therefore, the Sole Panelist finds that the Domain Names are identical with and confusingly similar to the Character Name 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 Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the Character Name 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 Names 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 Names 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) circumstances indicating that 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) by using the domain name, you have 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

Complainant alleges that the Respondent claimed, in correspondence to other registrants of domain names using the Character Name Marks, that he should receive his cost of $70 per registration. Shortly thereafter, Respondent offered to sell the Domain Names to Complainant for over $2,500, an amount in excess of his out-of-pocket costs directly related to the Domain Names.

Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i).

Respondent has registered 11 domain names all containing the exact name of unique and fanciful characters associated with the POKEMON® marks and the Character Name Marks. These registrations indicate a pattern of registering domain names in order to prevent the owner of the Character Name Marks from reflecting the marks in a corresponding domain name.

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(ii).

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

First, one such factor is that Respondent has made no use of the domain name. Complainant alleges that Respondent has not developed any active website using the Domain Names. Respondentís only response in correspondence to Complainant was that Respondent intended to establish "fan sites" using each of the Domain Names. This indication of intent is insufficient and such failure to use a domain name or to use a domain name in a bona fide manner has been found to constitute bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).

In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

Second, the Character Name Marks are 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 Character Name Marks with the gTLD ".com", 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").

That Respondent had notice of Complainant's rights in the Character Name Marks 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® marks and the Character Name Marks, and POKEMON® was extremely popular and well-known, well before Respondent's November 22, 1999, registration of the Domain Names. Complainant alleges that Respondent had actual knowledge of the Character Name Marks and their fame, and nevertheless proceeded to register the Domain Names. Respondent does not contest these allegations. Actual 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 Sole 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 names are 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 Character Name Marks, Respondent has continued to violate Complainant's trademark rights.

Based upon this evidence, the Sole Panelist concludes that Complainant has shown the necessary elements of the Policy paragraphs 4(b)(i) and (ii). In addition, Complainant has shown inaction in the failure to develop the Domain Names or their corresponding websites. Furthermore Complainant has shown Respondentís actual knowledge of the Character Name Marks prior to registration of the Domain Names. These facts are sufficient to support a finding of bad faith beyond the four nonexclusive criteria set forth in the Policy paragraph 4(b).

Therefore, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names are identical with and confusingly similar to Complainantís common law Character Name Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Nintendo of America, Inc.

 


 

Richard W. Page
Sole Panelist

Dated: January 11, 2001