Complainant is Nintendo of America Inc. of Redmond, Washington, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
Respondent is Centramerica.com SA, Sabbagh, Yehudi of Guatemala City, the Republic of Guatemala.
The disputed domain name <clubnintendo.com> is registered with TierraNet d/b/a DomainDiscover. It was registered on February 7, 1999.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On April 1, 2010, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On April 4, 2010, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2010. Respondent did not submit a timely response. Accordingly, the Center notified the Parties on April 27, 2010 that the due date for formal Response had passed and that it would proceed to appoint the Panel in the proceedings.
The Center appointed Andrew Brown QC, Frederick M. Abbott and Francisco Castillo Chacón as panelists in this matter on May 7, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 10, 2010, three days after appointment of the Panel, Respondent submitted a late Response. The Panel agreed to consider this late Response given that the Panel had only just been convened.
Complainant markets and distributes video game systems, software and accessories. It marketed its first video game system, under the NINTENDO trademark in 1983 and this has been followed by additional game systems under marks comprising or incorporating NINTENDO in 1991, 1996, 2001, 2004, 2005, 2006 and 2009.
Complainant owns over 100 active registrations for the NINTENDO mark in the United States. It is relevant in this case to look at these at the date of registration of the disputed domain name, namely February 7, 1999. At that date, Complainant held registered trademarks for NINTENDO ENTERTAINMENT SYSTEM (May 26, 1987), NINTENDO (December 25, 1990) in classes 14, 16, 18, 21, 25, and 28, NINTENDO and design (May 26, 1992).
Complainant has used the unregistered mark CLUB NINTENDO since 1989. An official Nintendo magazine featuring reviews and articles about Nintendo video games and Nintendo game systems was published under the CLUB NINTENDO mark in Europe from 1989-2002. Since 1991, Complainant has licensed a similar publication in Latin America under CLUB NINTENDO. A website for this has been and is maintained at “www.clubnintendomx.com” and the magazine is distributed in Guatemala as well as Mexico, Puerto Rico, Unincorporated Territory of the United States, the Dominican Republic, Honduras, El Salvador, Nicaragua, Costa Rica, Panama, Chile, Peru, Argentina, Colombia, Ecuador and Venezuela.
Respondent is a corporation based in Guatemala. The disputed domain name was registered on February 7, 1999. Respondent has been using the disputed domain name for more than 10 years to maintain an active message board.
Complainant contends as follows:
1. Complainant has rights in NINTENDO by reason inter alia of its USPTO registered trademarks for NINTENDO dating well before registration of the disputed domain name. The disputed domain name is confusingly similar to these trademarks. The addition of the word “Club” does nothing to diminish that confusion.
Complainant also has common law rights in the CLUB NINTENDO trademark since 1989 and as a result of having used the mark in Latin America since 1991. The disputed domain name is identical to Complainant's common law trademark CLUB NINTENDO.
2. Respondent registered the disputed domain name long after Complainant had well established rights in the NINTENDO trademark, its <nintendo.com> domain name (1995) and years after Complainant first used the CLUB NINTENDO mark in connection with official publications and offered those in Respondent's jurisdiction. Respondent has been using the disputed domain name to create confusion as to the source of its website and product offerings such that consumers will believe the site to be affiliated with or sponsored with Complainant.
3. Given the prominence of the NINTENDO mark worldwide, and on the Internet, Respondent's registration of the disputed domain name was in bad faith with full knowledge that including the NINTENDO mark as part of the disputed domain name would likely cause an Internet user to assume that the site was somehow sponsored by or affiliated with Complainant.
Respondent is using the disputed domain name to attract customers for commercial gain. Respondent provides commercial links to products that are directly related to and competitive with Complainant's own products and Respondent has charged customer registration fees to access its website. Complainant has received numerous inquiries concerning Respondent's website from consumers who are under the mistaken impression that the disputed domain name is affiliated with Complainant including complaints that they were charged a membership fee whereas Complainant's Club Nintendo membership is free.
Respondent contends as follows.
1. The disputed domain name is distinguished from Complainant's trademark by the word “club” which is the dominant textual element. The mark NINTENDO “has become weakened because of extensive third party use of the mark to describe a type of gaming machine”. Extensive third-party use “can weaken a mark in UDRP proceedings and overwhelm other considerations”.
2. While Respondent “acknowledges the numerous trademark filings of Complainant, simply establishing trademark rights is not enough for Complainant to carry its tripartite burden of proof in this action”. Respondent “did not register the [d]isputed [d]omain in bad faith, as the standards defining bad faith registration had yet to be articulated in the UDRP or Anticybersquatting Consumer Protection Act (ACPA), and did not yet exist in Respondent's home country of Guatemala or elsewhere”.
“The word Nintendo is incorporated into the [d]isputed [d]omain [name] not because Respondent wishes to confuse its visitors, but because the name is the only term that can describe the subject of the website.” “The use of a common word domain name related to the descriptive meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services, pursuant to [paragraph] 4(c)(i) of the UDRP.”
3. Respondent has been using the disputed domain name “for more than ten years to maintain a message board that makes information about how to use Complainant's NINTENDO products available to those who have purchased Complainant's products”.
“Respondent's website does not retail Complainant's products, or compete with Complainant unlawfully. Respondent's website simply provides information to users of Nintendo game systems and software products about how they may get more enjoyment from hardware of software (sic) that Nintendo retails in Spanish speaking markets.”
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant's trademark rights are measured as at the date when the Complaint was filed, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4.
If Respondent had registered the disputed domain name before Complainant established rights in its trademark that may have affected the Panel's determination whether Respondent acted in bad faith, but Complainant established rights in its trademark prior to Respondent's registration of the disputed domain name (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered trademarks with the USPTO comprising or incorporating NINTENDO from 1987 and had registered its domain name <nintendo.com> in 1995.
The Panel finds that the disputed domain name is confusingly similar to Complainant's NINTENDO trademark.
Complainant has made its prima facie case that Respondent lacks any rights or legitimate interest in the disputed domain name. Respondent has not suggested that Complainant ever authorised it to use the NINTENDO mark.
Respondent acknowledges Complainant's numerous trademark filings but contends that the Nintendo mark “has become weakened because of extensive third-party use of the mark to describe a type of gaming machine” and that “the word Nintendo is incorporated into the [d]isputed [d]omain [name] … because the name is the only term that can describe the subject of the website”. Respondent appears to be contending that it is making a bona fide offering of goods and services because it simply provides information to users of Nintendo games systems and software products about how they may get more enjoyment from hardware or software that Nintendo retails in Spanish speaking countries.
The Panel does not accept that Respondent has rights to and legitimate interests in the disputed domain name for the following reasons:
(a) There is no credible evidence before the Panel that the NINTENDO trademark has become weakened (or more relevantly) had become weakened as at the date of registration of the disputed domain name in 1999;
(b) The Panel accepts that in appropriate circumstances it can be legitimate fair use of a trader's registered or common law trademark to use that mark to refer to the owner's goods or services. But in this case the disputed domain name comprises not just the mark NINTENDO but rather CLUB NINTENDO. The addition of the word “club” involves adoption of the same term that Complainant has used for its own promotions and newsletters to Nintendo users. Moreover, Respondent used more of Complainant's mark and distinctive designs (including game characters) than was reasonably necessary to identify Complainant. By Respondent's own evidence, its use of Complainant's well-known mark and designs resulted in actual confusion among Internet users regarding Complainant's association with Respondent's website.
(c) The Panel has had regard to the factors adopted in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where resellers have registered a domain name incorporating their principal's trademark. One of the factors considered in relation to a respondent that was reselling a complainant's goods or services was whether respondent was using the domain name to sell only trademark goods of the trademark owner – otherwise it could be using the trademark to bait Internet users and then switch them to other goods. Here Complainant has presented evidence that Respondent is using the disputed domain name to advertise other unrelated products such as iPod Touch and Apple Mac Books and to sell free online storage. Also it has charged membership fees to join its website.
For all of these reasons, the Panel finds that para 4(a)(ii) of the Policy has been satisfied by Complainant.
A key contention from Respondent is that it did not register the disputed domain name in bad faith as the standards defining bad faith registration had yet to be articulated in the UDRP or ACPA and did not exist in Respondent's home country of Guatemala.
The Panel does not accept this. The disputed domain name was registered on February 7, 1999 before the UDRP came into force. However Respondent registered the domain name with NSI which was at the time the sole registry for top level domain names. NSI had a dispute resolution policy in place from July 1995 “which provided that if a complainant in a dispute over a domain name could establish that it had a trademark in the name that was registered under US law, NSI could suspend use of the domain name provided that the domain name registrant could not establish either that it owned a trademark in the name or that it had used the name prior to the grant of the trademark to the complainant”: David Lindsay, International Domain Name Law: ICANN and the UDRP (2007) paragraph 3.2.
In the present case, Complainant had trademarks comprising NINTENDO registered under U.S. law as at the date of registration. There is no evidence that Respondent owned trademarks in that name or that it had used the trademark prior to the grant of the trademark to Complainant.
Respondent has contended that simply establishing trademark rights is not enough for Complainant to carry its tripartite burden of proof and that Respondent has been making bona fide use of the disputed domain name for 11 years “during which time Complainant had knowledge that Respondent was using the [d]isputed [d]omain [name]”. Although not expressly articulated as a complaint of delay, the Panel has given fair consideration to this issue.
Previous panels have held that the defence of laches or delay has no application under the UDRP, The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616. The Panel accepts that laches or delay can be one factor in determining whether a Respondent has built up rights in the disputed domain name or acted in bad faith: Square Peg Interactive Inc. v. Naim Interactive Inc., NAF Claim No. 209572. The Panel therefore considers this further in relation to the next section of its findings.
The Panel finds that despite the fact that registration took place before the UDRP and the delay in complaint, the disputed domain name has been registered and used in bad faith.
Respondent was clearly aware of Complainant's trademarks at the time of registration because it seeks to justify its registration of the disputed domain name as good faith use because it is promoting Nintendo products.
Paragraph 4(b)(iv) of the Policy provides that evidence of registration and use of a domain name in bad faith exists where:
“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 or service on your web site or location”.
The evidence shows that Respondent is attempting to attract for commercial gain Internet users who think that its website is connected with or affiliated to Complainant's CLUB NINTENDO which was well-established in Latin America by 1999 when the disputed domain name was registered. By that time there had been eight years use of CLUB NINTENDO for a publication that was distributed in Latin America, including Guatemala. As a commercial operator which was seeking to promote Nintendo, Respondent can be expected to have seen this publication.
Complainant has presented evidence showing that the disputed domain name has attracted users who have been seeking the genuine CLUB NINTENDO website and have gone there by mistake. Further, there is evidence of commercial gain in that members of the public have paid fees to Respondent for membership of the site and that it is attracting income from the sale of Google advertising for various products and services.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <clubnintendo.com> be transferred to Complainant.
Andrew Brown QC
Frederick M. Abbott
Dated: May 20, 2010