WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite
Case No. D2001-1070
1. The Parties
1.1 The Complainant is Nintendo of America Inc., with its principal place of business in Redmond, Washington, United States of America.
1.2 The Respondents are Marco Beijen, a resident of the Netherlands, Beijen Consulting, a business operated by Marco Beijen, Pokemon Fan Clubs Org., and Pokemon Fans Unite. Pokemon Fan Clubs Org and Pokemon Fans Unite appear to be fictitious organisations based in Hong Kong. The address listed for them by NSI Associates, Cottagegasse 69, HK does not appear to be an actual address in Hong Kong. A search for this address on <www.google.com> revealed no Cottagegasse in Hong Kong, but the existence of a Cottagegasse in Vienna, Austria only. The Hong Kong street directory service <www.centamap.com> confirmed this result. The actual contact details for these entities (if they exist) are therefore unknown. The contact details for Marco Beijen and Beijen Consulting are Gommerskerspel 23, Nieuw-Vennep, NH 2151 RA, Netherlands.
2. The Domain Names and Registrar
2.1 The domain names upon which this Complaint is based are <mailpokemon.com>, <pokemonpost.com>, <pokepost.com>, <pokefan.com>, and <pokemontop50.com> (collectively known as the "Disputed Domains"). The registrar of the domain names as at the date of the Complaint is Network Solutions, Inc ("NSI").
2.2 The Uniform Domain Name Dispute Resolution Policy was not designed to resolve complaints involving multiple domain names at the same time, especially if separate Respondents are involved. However, in this situation, it appears that the separate Respondents listed above may actually be controlled by Mr. Beijen or by entities controlled or established by him (though Mr. Beijen does dispute this). Based upon analysis set out later in this decision, the Panel has decided to treat this Complaint as though Mr. Beijen is in control of the Disputed Domains.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on August 28, 2001, and in hard copy on August 29, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint is being sent to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint is being sent to the Registrar of the domain name in dispute, NSI.
3.3 On August 29, 2001, the Center sent the Complainantís representative an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to NSI on September 3, 2001, by email. NSI responded to the Centerís request by email on the same day, stating:
(a) that NSI had received a copy of the Complaint;
(b) that NSI was the registrar for the domain names in dispute;
(c) that the Respondents were the current registrant of the domain names in dispute;
(d) that the Disputed Domain names <mailpokemon.com>, <pokemonpost.com>, <pokepost.com> <pokefan.com>, and <pokemontop50.com> were active;
(e) the Respondentsí contact details; and
(f) that Network Solutionsí 5.0 Service Agreement was in effect.
3.5 On September 5, 2001, the Center entered into email communication with the Complainantís representative (copied to the Respondent). A reply was received from the Complainant and the Respondent on September 6-7, 2001. A Supplemental Filing was made by the Complainant on September 10, 2001 (email version) and September 13, 2001 (hard copy). The Center received further correspondence by email from the Respondent on September 14, 2001.
3.6 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on September 14, 2001, to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainantís representative by email (without attachments).
3.7 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on October 5, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations. On October 9, 2001, the Center received an email from a Hong Kong web-hosting company, Outblaze confirming that the Respondent was administering the Disputed Domains.
3.8 The Center sent a Transmission of Case File to Administrative Panel by email on October 19, 2001. The documentation was received in hard copy by the Panel on October 22, 2001, in Sydney, Australia.
3.9 All other procedural requirements appear to have been satisfied.
3.10 The Panel wishes to remind Complainants that, whilst complaints must be complete, submissions should be concise and not contain superfluous materials. At least 50% of the voluminous Complaint in this case contained repeated copies of auto-response generated emails with attachments comprising unintelligible renderings of ASCII text, the inclusion of which wasted not only the Centerís resources but also those of the Panel.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
Nintendo of America Inc ("Nintendo") is a wholly owned subsidiary of Nintendo Co. Ltd of Japan. Nintendo is in the business of marketing and distributing video game systems, software and accessories. Nintendo owns rights to market and distribute a childrenís computer game series, Pokemon, and related products ("Pokemon Franchise"). The Pokemon Franchise has grossed over US$14 Billion in world-wide sales for Nintendo since it was introduced in 1996 and is a distinctive and famous product line around the world. The Complainant owns and operates websites including <nintendo.com> and <pokemon.com>.
4.2 The Complainantís trade marks
The Complainant is the owner of numerous registrations for the trade mark "POKÉMON", "PIKACHU" and uses an abbreviated form of "POKÉMON", "POKÉ" in the United States of America and numerous other countries around the world, including in China.. The trade mark registrations cover a wide range of goods and services, in particular international trade mark classes 9, 14, 16, 18, 20, 21, 25, 28, 30 and 41). "POKÉMON" is a well-known trade mark with very substantial goodwill in many countries around the world.
4.3 Activities of the Respondent
As stated above, no Response to the Complaint has been filed. The Center has received copies of correspondence from the Respondent claiming that his involvement in the Disputed Domains was merely to maintain them on behalf of Outblaze and that he had ceased all involvement with the Disputed Domains in 1999. Outblaze is a privately held web-hosting company based in Hong Kong. The Center has received copies of correspondence from Outblaze in which a director of that company stated that Outblaze is only an applications and web-site hosting company who have no rights to or control over any of the domain names for which they were listed as technical contacts. Outblaze revealed that it did have a contract with the Respondent in which Outblaze provided services for the Disputed Domains and that it was investigating whether the Respondent had breached the terms of that agreement. Outblaze stated that the Respondent was the holder of the administrative passwords for the Disputed Domains.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the disputed domain names, which the Respondent has registered, are confusingly similar to the Complainantís "POKEMON" trade mark. The Complainant also asserts that the Disputed Domain names are confusingly similar to its domain name <pokemon.com>, and that the Respondent is using the disputed domain names to signify to internet users a business connection with the Complainant when in fact no such connection exists. This is particularly due to the presence of an icon depicting a character whose trademark is registered by the Complainant, PIKACHU on the sites in question.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent should be considered as having no legitimate interest in respect of the disputed domain names. The Complaint states that there is no evidence that the Disputed Domain names correspond with the business of Mr. Beijen or that the fan clubs listed as registrants of some of the Disputed Domains have any such rights. The Disputed Domain names were registered approximately three years after the introduction of the Pokemon Franchise.
5.4 The Complainant states that the Respondent uses the <pokemontop50.com> website to generate advertising revenue as part of a top50 webring (sites that cross-promote each other).
5.5 The Complainant states that the Respondent uses <mailpokemon.com>, <pokepost.com>, <pokemonpost.com> and <pokefan.com> to provide free email services to the general public. These sites prominently display a character from the Pokemon Franchise, Pikachu. Websites located at each of the Disputed Domains contain text which cross-refer a visitor to the other sites.
5.6 The Complainant states that the Respondent uses the Complainantís trademarks in meta-tags on websites located at the Disputed Domains.
5.7 The Complainant received automated responses to notices that it sent to the postmaster email address for each of the Disputed Domains referring the Complainant to a web page hosted on a website registered by the Respondent, <beijen.com>.
5.8 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the domain names in dispute in bad faith.
In support of this assertion, the Complaint states the following:
(a) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainantís registered trademarks as to the source, sponsorship, affiliation or endorsement of his websites, or the services advertised and sold at these websites;
(b) The Respondent is attempting to gain a "free ride" on the goodwill of the Complainantís trademarks;
(c) The Respondent is using banner advertising to derive profits from the goodwill created by the Complainantís trademarks;
(d) The Respondent has had notice of the Complainantís rights to Pokemon trade marks since September 2000, and has continued to use those marks since receiving that notice;
(e) The Complainantís trade marks are highly distinctive and fanciful marks. They are not generic words. Therefore, it is highly unlikely that the Respondent devised the names used in the Disputed Domains without reference to the Complainantís trade marks; and
(f) The Respondentís use of the Complainantís trademarks in the meta-tags on the index.html pages hosted on the Disputed Domains is indicative of the Respondentís intention to intentionally direct Internet traffic to its websites, to disrupt the business of a competitor and to profit by creating a likelihood of confusion.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.2 Domain Name identical or confusingly similar to Complainantís trade mark
The Disputed Domains all contain the word Pokemon or derivatives from it. The Complainant has trade mark registrations in numerous jurisdictions for the word "POKEMON".
The names of the Disputed Domains and the Complainantís trade mark are not identical, and the issue is therefore whether the domain names and the mark are confusingly similar.
As far as a comparison between the names of the Disputed Domains and the Complainantís trade mark of the word "POKÉMON" is concerned, the addition of the words "mail", "post", "fan" and "top50" to the word "POKÉMON" in the disputed domain names has, in the Panelís view, minimal impact on what the viewer focuses on, namely, the word "POKÉMON" or the derivative "POKÉ". In the Panelís opinion, the Respondent has deliberately added these words to the words "POKÉMON" or "POKÉ" in the Disputed Domains because, as the Complainant asserts, the Complainantís trade marks are distinctive and well known in many countries around the world.
This Panelís view, consistently expressed in prior decisions, is that common nouns are rarely distinguishing elements. Where, as here, the common noun selected coincides with the services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable. The Panel also infers that the words "POKÉMON" and "POKÉ" were chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with the Respondentís web sites. The Panel in any event finds that the names of the Disputed Domains are confusingly similar to the Complainantís trade mark and that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent has provided no information to the Panel asserting any right or legitimate interest it has in the disputed domain names. The Respondent has provided no evidence that it has entered into licensing arrangements with the Complainant to use the word "POKÉMON" or derivatives from it.
Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain names. However, there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
6.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
6.5 In order to show bad faith registration by the Respondent, the Complainant asserts that the Disputed Domains were registered in bad faith by the Respondent because "POKEMON" is a well known trade mark in connection with childrenís toys and because the Respondent only registered the Disputed Domains after the POKEMON Franchise had achieved considerable world-wide success.
6.6 Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
6.7 As discussed, the word "POKÉMON" is obviously a well-known mark used by the Complainant in its day-to-day business. The Respondent has used this mark and the related "Pikachu" mark on its websites and in meta-tags designed to attract visitors to its sites. Use of these trade marks by someone with no connection or legal relationship with the Complainant suggests opportunistic bad faith. In the Panelís opinion, the disputed domain names were registered by the Respondent for one or more of the reasons outlined in sub-paragraphs 4 (b) (ii), (iii) and (iv) of the Policy.
6.8 The Panel is of the view that the domain names in dispute were registered and are being used in bad faith by the Respondent. The websites located on the Disputed Domains are clearly designed to appear to a member of the public as having official sanction from the Complainant. The dominant theme on the websites located at the Disputed Domains is that of the Complainantís registered trade mark, "Pikachu" (apparently the most popular of the "Pokemon"). Despite the insertion on <www.pokemontop50.com>, in the smallest font-size possible and in a colour designed to blend into the background of the page, of a disclaimer that:
"Nintendo® Corporation has not authorized, sponsored or approved this website and is not affiliated with The Top50Network™ Pokémon® is a registered trademark of Nintendo® Corporation. For the official Pokémon® website go to http://www.pokemon.com/:",
is not regarded by the Panel as showing sufficient intention on the Respondentís behalf to disassociate that website from the trade marks of the Complainant. The inclusion of the Complainantís trade marks in the meta-tags of the websites located at the Disputed Domains only re-inforces, in the Panelís opinion, the Respondentís intention to use the Disputed Domains in bad faith.
6.9 Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain names <mailpokemon.com>, <pokemonpost.com>, <pokepost.com>, <pokefan.com> and <pokemontop50.com> be transferred by NSI to the Complainant, Nintendo of America, Inc.
Philip N. Argy
Dated: November 5, 2001