WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nintendo of America Inc. v. Administrator Lunarpages, Alan Smith, Neoconsoles Inc., Liu Hai, Linda Wong, and Wong

Case No. D2011-0912

1. The Parties

Complainant is Nintendo of America Inc. of Redmond, Washington, United States of America, represented by Miller Nash, LLP, United States of America.

Respondents are: Administrator Lunarpages, Alan Smith of Queensland, Australia and Tallahassee, Florida, United States of America; Neoconsoles Inc. of Tallahassee, Florida, United States of America; Lui Hai of Luohe, China; Linda Wong of Columbus, Ohio, United States of America; and Wong of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain names are registered with Tucows, Inc. (the “Registrar”) and include: <nintendodsicenter.com>, <nintendo3dscenter.com>, <dsigamescenter.com>, <3dsdownloadcenter.com>, <dsidownloadservice.com>, <nintendodsiclub.com>, <download3dsgamesfree.com>, <dsgamesclub.com>, <ndsicenter.com>, <nintendodsicentre.com>, <nintendodsigameslist.com>, and <nintendowiicenter.com>.

3. Procedural History

The initial Complaint respecting the disputed domain name <nintendodsicenter.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <nintendodsicenter.com>. On May 26, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent Administrator Lunarpages, Alan Smith 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 Administrator Lunarpages, Alan Smith of the initial Complaint, and the proceedings commenced June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response to the initial Complaint was June 29, 2011. Respondent Administrator Lunarpages, Alan Smith filed its Response with the Center June 26, 2011.

The Center appointed Jeffrey D. Steinhardt, Frederick M. Abbott and David E. Sorkin as panelists in this matter on August 1, 2011. 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.

Following the filing of the initial Complaint, Complainant allegedly did reverse WhoIs searches and other investigation in response to customer complaints. Based on these investigations, Complainant alleged that additional disputed domain names were owned by the same Respondent and, therefore, Complainant sought leave to add additional domain names to this proceeding.

On July 1, 2011, Complainant made its first supplemental filing, requesting leave to file an Amended Complaint to add the second disputed domain name <nintendodsicentre.com>. Complainant requested the addition on the basis that the same Respondent also owned the second disputed domain name and used it to display identical content to that displayed on the website to which the first disputed domain name <nintendodsicenter.com> routed.

On August 3, 2011, Complaint filed its Second Request for Leave to Amend, seeking to add nine further disputed domain names. Complainant’s Second Request for Leave to Amend alleged that all of the disputed domain names that were the subject of its requests belonged to the same respondent as reflected either (1) by the nearly identical appearances of the websites to which the disputed domain names directed, or (2) similar combinations of contact details listed in the relevant Whois records.

On August 8, 2011 Complainant filed further supplemental pleadings, styled “Complainant's Supplemental Memorandum in Support of Complainant's Second Request for Leave to Amend Complaint, Request to Cancel Transfers and Request to Add Additional Domain Name.”

Complainant’s Request to Cancel Transfers alleged that on August 2, 2011, the date that Complainant sent Respondent Administrator Lunarpages, Alan Smith its Second Request for Leave to Amend, six disputed domain names were transferred to several new registrants in an attempt at cyberflight.¹

In light of the facts alleged in Complainant's Request to Cancel Transfers and Complainant's supplemental filings received on July 1, August 3, and August 8, 2011, the annexes provided by Complainant in support of them, and the Panel's determination that Respondent Administrator Lunarpages, Alan Smith had violated the terms of Paragraph 8(a) of the Policy, the Panel issued two Procedural Orders on August 12, 2011.

Procedural Order No. 1 granted Complainant’s Request to Cancel Transfers and required the Registrar to cancel the transfer of those six disputed domain names and confirm that the disputed domain names would remain on Registrar lock for the duration of these proceedings. On August 15, 2011, the Registrar confirmed that the disputed domain names would remain on Registrar lock. The Registrar on August 23, 2011 cancelled the transfers.

Procedural Order No. 2 was also issued August 12, 2011, granting Complainant until August 19, 2011 to file its proposed Amended Complaint and requiring Complainant to send the Amended Complaint electronically to the existing and any new Respondents. The Order also provided that the existing and any new Respondents would have a full 20 days after receiving the Amended Complaint to file responses under the Rules, paragraph 5.

The Amended Complaint included a total of twelve disputed domain names and was filed on August 17, 2011. On August 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On August 23, 2011, the Registrar transmitted by email to the Center its verification response, confirming that the Respondents listed above were the registrants and providing the contact details.

The Center verified that the Amended Complaint satisfied the formal requirements of the Policy, the Rules, and the WIPO Supplemental Rules. The Center re-notified the proceeding to all Respondents on August 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response to the Amended Complaint was September 17, 2011. No responses to the Amended Complaint were filed.

On September 27, 2011, the Panel issued Procedural Order No. 3, seeking further information from the parties respecting certain alleged trademarks of Complainant’s companies.

Complainant was initially given three days to submit a response to Procedural Order No. 3, and Respondents were provided a further three days to respond to Complainant’s submission. Complainant emailed the Center to request clarification of Procedural Order No. 3, and the Panel responded, extending the period for Complainant’s response by two days, until October 2, 2011, and extending the deadline for Respondents’ further comments to October 5, 2011.

Complainant submitted its response to Procedural Order No. 3 to Respondents on September 30, 2011. Complainant transmitted the response to the Center late, allegedly due to an error in the electronic address, on October 4, 2011.² Respondents refrained from making any further submissions.

On October 12, 2011, the Panel issued Administrative Panel Procedural Order No. 4, requesting that Complainant specify its choice of Mutual Jurisdiction under the Rules for each of the twelve disputed domain names. Complainant submitted its response, listing its elections, on October 14, 2011.

4. Factual Background

Complainant and its related companies³ own a large number of trademark registrations in the field of video and computer gaming worldwide, including for example the following trademarks in the United States of America:

NINTENDO, United States Trademark Registration No. 1,213,822 (issued October 26, 1982); NINTENDO DS, United States Trademark Registration No. 3,053,615 (issued January 31, 2006); Wii, United States Trademark Registration No. 3604540 (registered April 7, 2009).

Complainant also owns Community Trademark Registrations including for example:

NDSi, Registration No. 008164444, registered August 26, 2010;

DSi, Registration No. 008155798, registered December 24, 2009.

Complainant also has pending registrations in the United States for the marks NINTENDODSI (filed October 2, 2008), NINTENDODSI & design (filed October 2, 2008), and NINTENDO 3DS (filed July 8, 2010). Complainant also has a considerable number of registrations worldwide for trademarks and logos consisting of the NINTENDO mark combined with other words or initials such as NINTENDO 3DS, NINTENDO DSi, and NINTENDO Wii.

A listing of websites to which the disputed domain names route is set forth below, along with registrant and administrative contact information from the corresponding WhoIs records. The final column in the listing below describes the current appearance of the respective websites associated with the disputed domain names.⁴ Some of the websites display Complainant’s trademarks and invite users to pay for a membership service that presumably enables users to download tens of thousands of game programs of Complainant or those that run on Complainant’s popular gaming platforms.

As recently as August 29, 2011, the website at “www.nintendodsigameslist.com” displayed the membership download content and posted a small disclaimer at bottom of the last page, stating “We are not affiliated with Nintendo, Nintendo DSi. All Rights Reserved.”

5. Parties’ Contentions

A. Complainant

Complainant avers that it markets and distributes video games systems, software and related products, having marketed its first video game system in 1983. Since then, Complainant avers, it has released several additional game systems, including the NINTENDO DS and DS LITE in 2004, Wii in 2006, NINTENDO DSI in 2008, and NINTENDO 3DS in 2011. Complainant represents that as of March 31, 2011 it had sold 146 million DS model game units and that the NINTENDO 3DS game system sold 3.61 million units in its first month on sale.

The websites associated with all of the disputed domain names, according to Complainant, display or link to nearly identical content offering video game downloads to the public in exchange for payment of membership fees. The disputed domain names also route users to websites that are infringing Complainant’s trademarks and copyrights through their displays and software download offerings. Complainant includes extensive annexes with recent evidence that supports these allegations.

Complainant avers that it made previous, unsuccessful attempts over the past year to stop Respondent Administrator Lunarpages, Alan Smith from infringing Complainant’s intellectual property rights.⁵ Complainant allegedly submitted notices to then Internet service provider (Lunarpages

Division of Add2Net, Inc) for the sites at “www.nintendodsicenter.com” and “www.nintendocentre.com” under the provider’s Acceptable Use Policy and the Digital Millenium Copyright Act (15 U.S.C. §512). Complainant also avers that it sent notices to the payment service providers for the sites. Public access to the sites was then disabled, but Complainant alleges that the sites were moved to new Internet service providers and resumed operation.

Ownership information for the disputed domain names was also changed, in attempted cyberflight.⁶ In one case, as of February 21, 2011, the registrant name for <nintendodsicenter.com> was changed first to one of the registrants for several of the other disputed domain names now added to this proceeding - then to the present Respondent Administrator Lunarpages, Alan Smith. More recently, Complainant alleges, on the same day that Respondent received Complainant’s Second Request for Leave to Amend the Complaint, Respondent Administrator Lunarpages, Alan Smith changed the ownership information for six of the disputed domain names before they were locked by the Registrar.

On the basis of the allegations in the Complaint, Amended Complaint and supplemental filings, Complainant requests transfer of the disputed domain names. Complainant’s legal allegations follow.

i. Confusingly Similar

Complainant alleges that it owns, uses and has registered worldwide “the ‘world-famous’ NINTENDO mark and other famous marks, including NINTENDO DS, NINTENDO DSI, NINTENDO 3DS, Wii, NDSI and DSI (collectively the ‘NINTENDO marks’) in connection with video games systems, video games and related accessories.” Complainant describes substantial use of the NINTENDO Marks in its own domain name registrations, advertising, and commerce in twenty-five countries, and widespread recognition for the NINTENDO brand in popular culture and the media.

Complainant contends that all of the disputed domain names are confusingly similar to its trademarks: “Nine incorporate the marks NINTENDO, NINTENDO DSI, NINTENDO 3DS, NINTENDO WII, DSI or NDSI in their entirety or combined, adding only . . . descriptive terms.” Citing prior UDRP decisions, Complainant alleges that the addition of those terms does not dispel confusion but suggests that the disputed domain names are associated with Complainant.

With respect to the three disputed domain names that do not incorporate Complainant’s marks, Complainant also alleges confusing similarity. Complaint contends that these three disputed domain names “contain distinctive portions of the NINTENDO Marks, namely ‘DS’ and ‘3DS,’ that Respondent combined with descriptive words specifically aimed to associate these portions with video games to confuse consumers. The addition of the words ‘download center,’ ‘download games free,’ and ‘games club,’ do not dispel confusion, but rather increase confusion and attract consumers to the site believing they can download free Nintendo games.” Complainant states that UDRP panels have found confusing similarity when the distinctive part of a domain name was identical to the distinctive part of a trademark, citing the decisions in Finter Bank Zurich v. Gianluca Olivieri, WIPO Case No. D2000-0091; Crown Trophy, Inc. v. PrivacyProtect.org/Pluto Domain Services Private Limited, WIPO Case No. D2009-0061.

Complainant also alleges that the use of Complainant’s copyrighted characters and trademarks on the websites demonstrates Respondent’s intention to capitalize on Complainant’s brands and compounds confusion.

ii. Rights or Legitimate Interests

Complainant contends that Respondent⁷ has no rights or legitimate interests in use of the disputed domain names.

Complainant states that it believes Respondent does not hold trademark registrations that are identical, similar, or related to the NINTENDO Marks and that Respondent is not an authorized dealer, distributor, or licensee. Complainant alleges that Respondent is not commonly known by the disputed domain names and that Respondent is not making a bona fide offering of goods or services and instead has engaged in bad faith, as described below. Finally, Complainant alleges that the use of the disputed domain names cannot be characterized as non-commercial or fair use, since “Respondent’s Web Sites are a network of commercial sites, which generate revenue through membership fees collected in exchange for the promise of downloads of Nintendo’s copyrighted games.”

iii. Registered and Used in Bad Faith

With respect to bad faith, Complainant alleges that Respondent

(1) registered and is using disputed domain names that contain Complainant’s famous NINTENDO Marks;

(2) registered and is using the disputed domain names with full knowledge of Complainant’s rights in the marks;

(3) uses Complainant’s video game characters and cover art on its web sites to create the false impression of Complainant’s sponsorship or endorsement of the web sites;

(4) uses the disputed domain names intentionally to attract Internet users to the web sites for commercial gain by creating a likelihood of confusion with the NINTENDO Marks to sell memberships that Respondent claims will provide access to downloads of Nintendo video games, which are not legal or authorized by Complainant; and

(5) in response to Complainant’s enforcement efforts, Respondent has demonstrated a pattern of behavior designed to conceal its true identity and evade the UDRP process including by using false names and addresses to register the disputed domain names.

B. Respondents

Respondents did not provide any substantive reply to Complainant’s contentions. The only Response received by the Center consisted of Respondent Administrator Lunarpages, Alan Smith’s submission of a copy of the Center’s model Response. No amendments were made to that generic, model pleading, with the exception of adding contact details.

6. Discussion and Findings

A. Procedural Matters

Before considering the substance of the Amended Complaint, the Panel must address several procedural issues.

i. Additional Domain Names in Dispute

Paragraph 10(e) grants the Panel authority to determine whether to consolidate multiple domain name disputes in a single proceeding in accordance with the Policy and the Rules. As explained below, the Panel rules that the interests of due expedition and fairness to the parties will be served by considering all twelve of the disputed domain names in this single proceeding.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.8 notes that panels have in some cases been reluctant to grant requests for adding new domain names to an existing complaint, when, as here, the request is received only after appointment of the panel. ⁸ Where panels grant such requests, the WIPO Overview 2.0 states that a panel typically orders “a partial recommencement of the procedure to allow a proper response opportunity in relation to the added domain names.” Consistent with this observation, in granting Complainant’s request to add more domain names to the proceeding, Panel Order No. 2 required Complainant to send the Amended Complaint to the existing and any new Respondents and provided Respondents a full 20 days to file responses under the Rules. None of the Respondents elected to submit a Response.

In ruling to consolidate all twelve disputed domain names into this single proceeding involving multiple respondents, the Panel realizes that its decision may appear to be at odds with the position articulated by some other panels. Prior decisions that granted requests to consolidate multiple domain names into a single proceeding have cited (1) the desire to avoid the risk of reaching irreconcilable decisions under the Policy; (2) the presence of only a single respondent, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334; (3) the presence of a single individual having control over multiple respondents, e.g., General Electric Company v. Prabish Thomas/Green Energy LLC, WIPO Case No. D2007-1866, and (4) a complainant’s reliance on a single trademark e.g., Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337. Of course all consolidation rulings must take into consideration the mandate of paragraph 11(c) of the Rules that proceedings be conducted with due expedition.

Decisions refusing to grant consolidation, in addition to being concerned with due expedition, have also expressed concern that applications for consolidation made after panel appointment have the potential to interfere with respondent due process rights. For example, in Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547, the panel determined that addition of the new domain names would interfere with a respondent’s right to request a three-member panel in place of the sole panel already appointed in the matter. Id., cited in Apple Inc. v. Private Whois Service, WIPO Case No. D2011-0929 (same result). That procedural right is not at issue in this case since Complainant requested a three-member panel from the outset.

In a decision involving the present Complainant several years ago, another panel wrote that the UDRP “was not designed to resolve complaints involving multiple domain names at the same time, especially if separate Respondents are involved.” Nonetheless the panel in that case decided to consolidate multiple names into the proceeding because it appeared that all respondents were under the control of a single respondent. Nintendo of America Inc. v. Marco Beijin, Bejen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070.

After consideration of a number of factors, the Panel is inclined to grant in full the request for addition of domain names to the dispute, despite the fact that Complainant applied to add several additional domain names to the proceeding after panel appointment. The Amended Complaint and other information available to the Panel suggests that a decision respecting the different disputed domain names will be based on the same underlying facts as those averred in the initial Complaint. In the case of at least eight of the disputed domain names, the Panel will be also be making determinations respecting the same trademarks as those listed in the initial Complaint.

As noted by Complainant, the content on the websites to which the disputed domain names routes is nearly identical. The mix of overlapping registrant information for all of the twelve domain names in dispute and the attempts by Respondents to change ownership information to escape Complainant’s enforcement efforts are further evidence that supports the conclusion that all the registrants are either (1) aliases for the same person (2) under control of a single individual or (3) reflective of a small group of individuals acting in concert. In the circumstances, the Panel considers this to be the equivalent of a single respondent for purposes of consolidating multiple domain names into a single dispute.

While it is true that the addition of domain names has entailed some delay to the proceeding, the delay has resulted from Complainant’s requests. The Panel permitted Complainant only a few days to amend its pleadings. Complainant is the party most likely to be prejudiced through the additional time required for further registrar verifications, to ensure fulfillment of formalities such as elections of Mutual Jurisdiction, and for a renewed notice and response period.

In summary, the Panel finds that consolidating the twelve disputed domain names in this proceeding will avoid the risk of inconsistent decisions involving many of the same parties and meets the injunction of the Rules that the case proceed with due expedition.

ii. Proper Respondents

The Panel must also address the question of proper respondents in this proceeding.

Complainant alleges that all of the disputed domain names were under the ownership of the previously named Respondent Administrator Lunarpages, Alan Smith, but that the disputed domain names are “registered under various aliases.” In its supplemental submissions, Complainant also provided extensive information about the WhoIs listings, which include the Respondents listed in the case caption above.

Irrespective of the fact that the annexes to the Complaint establish that most if not all of the disputed domain names are used to direct users to websites displaying the same or very similar content, the Panel rules that the proceedings must include as Respondents all those named in the WhoIs record as registrants of the disputed domain names. The Panel feels this result is required under the UDRP and the Rules, regardless of whether the registrants are actual persons and legal entities, or whether they are simply aliases for the same person or entity. See, e.g., Rules, paragraph 1 (“Respondent means the holder of a domain-name registration against which a complaint is initiated”).

Accordingly, notice of the proceedings and all related communications have included all the Respondents named above.

iii. Notification of Proceedings to Respondents

The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

The Center sent to Respondents by courier notification of these proceedings. The Center used the addresses listed in the WhoIs records for the disputed domain names, both those initially listed before the filing of the Amended Complaint, and also the addresses listed for the six disputed domain names that were transferred briefly to third parties (the “Temporary Transferees”) before the Panel’s August 12, 2011 order to the Registrar to cancel transfer of the registrations.

In several instances, the courier company was unable to deliver to the addresses indicated for Respondents. In others, the courier company indicated that the addressee was unavailable or refused delivery. The Center also notified Respondents by using the email addresses provided by the Registrar in its verification responses to the Center. Only one of the electronic notifications returned delivery errors but one of the courier-delivered written notices to that registrant was successfully delivered.

The Center was also informed by the courier company of the status of delivery of the written notifications to the Temporary Transferees: one Temporary Transferee accepted delivery but reportedly said it did not own the disputed domain names; one of the listed registrant companies was non-existent; and two of the Temporary Transferees refused to accept delivery of the written notification. All of the electronic notifications to the listed email addresses for the Temporary Transferees returned failed transmission errors.

The Panel is satisfied that by sending communications to the contacts made available through the Registrar, and those provided by the registrants to the Registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Amended Complaint upon Respondents.

iv. Supplemental Filings

The Panel has considered all of Complainant’s supplemental filings and its applications to add further disputed domain names. The Panel has decided to accept into the record all of the filings received to date.

Within a few days of filing the Complaint, before this Panel was appointed, Complainant sent its first application to amend. Further submissions and applications to amend were also made, supported by extensive annexes and legal memoranda. As noted above, the Panel issued a Panel Order permitting the proposed amendment of the Complaint, ensuring that all Respondents were given notice and the opportunity to respond.

Following receipt of the Amended Complaint, the Panel issued Procedural Order No. 3 on September 27, 2011. The deadline set for Complainant to submit its response to the Panel’s request was extended to October 2, 2011.

On October 4, 2011, Complainant allegedly discovered that its emailed response to Procedural Order No. 3 had not been directed to the Center, due to an address error. On October 4, 2011, Complainant submitted its late response to the Center. Complainant alleges that its response to Procedural Order No. 3 was, however, timely sent to all Respondents and the Registrar on September 30, 2011, in advance of the October 2, 2011 deadline. Complainant has submitted evidence in support of these allegations.

Complainant contends that transmission of its response to Procedural Order No. 3 was technically timely under the Rules. Complainant cites the language of paragraph 2(f) of the Rules, which states “[e]xcept as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made….(i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable.” Complainant also contends that when it learned of the addressing error, it promptly notified the Panel of non-communication in compliance with its obligations under the Rules paragraph 2(j).

Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents. Paragraph 2(j) of the Rules, among other things, grants the Panel discretion over further proceedings concerning a missed communication.

The Panel disagrees with Complainant that paragraph 2(f) is directly applicable to the missed transmission to the Center based on a plain reading of the Rule; because the Center was left off of the list of addressees on Complainant’s email, no “communication” was “transmitted” to the Center. Nonetheless, Complainant has submitted credible evidence that the response to Procedural Order No. 3 was timely sent to Respondents even though Complainant’s delayed or misdirected response was received by the Center two days late.

In summary, the Panel has determined that no prejudice to Respondents will result from accepting and considering Complainant’s response to Procedural Order No. 3, along with all of Complainant’s supplemental submissions, since all of the submissions pertain to allegations as to which Respondents have been given the opportunity to respond in each instance.

B. Substantive Decision

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).

With respect to each disputed domain name, Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Complainant must establish these elements even if Respondents do not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

i. Identical or Confusingly Similar

As elaborated below, the Panel agrees with Complainant that nine of the disputed domain names are confusingly similar to trademarks in which Complainant has rights. They are: <nintendodsicenter.com>, <nintendo3dscenter.com>, <dsigamescenter.com>, <dsidownloadservice.com>, <nintendodsiclub.com>, <ndsicenter.com>, <nintendodsicentre.com>, <nintendodsigameslist.com> and <nintendowiicenter.com>. The Panel majority also agrees that <dsgamesclub.com> is confusingly similar to trademarks in which Complainant has rights. Unanimously, the Panel disagrees, however, that the disputed domain names <3dsdownloadcenter.com> and <download3dsgamesfree.com> are confusingly similar to trademarks in which Complainant has rights.

Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.

(a) Registered Trademarks

As noted in the Panel’s factual findings above, Complainant has a large number of registered trademarks pertinent to this proceeding, including many that incorporate the NINTENDO mark, alone or in combination with individual product names. On the basis of Complainant’s trademark registrations for NINTENDO, Wii, NDSi and DSi, the Panel agrees that all nine of the disputed domain names that incorporate any of those trademarks are confusingly similar to Complainant’s trademarks in the sense of the Policy.

The Panel concludes that the addition of the descriptive terms such as “center,” “gameslist,” “download center,” “centre,” “download service,” “club,” and “games center,” does not negate the confusion created by Respondents’ complete inclusion of the NINTENDO, Wii, NDSi and DSi trademarks in the respective nine disputed domain names. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629. In fact, given that Complainant distributes electronic gaming devices, software and gaming services both through ‘brick and mortar’ and Internet channels, the addition of many of the descriptive terms listed above simply increases the confusion that Internet users would experience. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark….”).

The question remains whether the record establishes Complainant’s ownership of trademarks in the terms “DS” and “3DS,” and if so, whether Respondents’ adoption of those trademarks results in confusing similarity.

(b) Unregistered Trademarks

Complainant alleges that trademark subsists in “DS” and “3DS,” although Complainant concedes that there are no registrations for these terms standing apart from other trademarks of Complainant.⁹ In part as a result of its deliberations on the question of unregistered marks, the Panel issued Administrative Panel Procedural Order No. 3, which provided in pertinent part:

“Complainant is requested to submit electronically to the Center and Respondents allegations that would indicate that Complainant has trademark rights (registered or unregistered) in the terms ‘DS,’ ‘NDSi,’ ‘3DS’ and ‘DSi.’ The allegations should address specifically the subsistence of those trademarks in the absence of any use of those terms in combination with any other marks, such as the NINTENDO mark. Any allegations that Complainant chooses to submit should be supported by specific evidence.”

The Panel has considered in detail Complainant’s response to Panel Order No. 3 as well as Complainant’s earlier submissions to the extent that they addressed this question.¹⁰ The Panel will first discuss the trademark status of the term “DS,” since the Panel reaches a different conclusion respecting the status of “3DS.”

Panels recognize the existence of an unregistered trademark for purposes of the Policy when it is demonstrated that the term in question has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of "secondary meaning" includes the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. E.g., WIPO Overview 2.0, paragraph 1.7.

Complainant alleges that it has common law rights to the DS trademark and that the mark has become synonymous with Complainant and its Nintendo DS video game franchise. Complainant avers that it began using the NINTENDO DS mark in 2004 and came to use both NINTENDO DS and DS alone as the game grew in popularity. Complainant has provided annexes consisting of online publications that refer to the DS handheld game unit, extensive on line reviews of games for the DS platform that link to online comments from many consumers, and examples of company-produced literature and manuals that use the DS name.

Complainant also bases its position that “DS” should be considered as a common law trademark on the large number of DS game units sold (146 million) and in use worldwide, along with several years’ continuous use in connection with games of the marks NINTENDO DS and the term “DS” without the NINTENDO mark. In short, Complainant contends that the overwhelming popularity of the game has caused “DS” to become a distinctive identifier that consumers associate with Complainant, the Nintendo DS video game, and related video games and systems.

On the basis of the record before it, the majority of the Panel agrees, and recognizes that Complainant owns unregistered trademark rights in DS for the purposes of Policy paragraph 4(a)(iii). Certainly among the audience of younger consumers, the Panel majority feels, the term has acquired secondary meaning, referring to Complainant’s game and related items and services.¹¹

Since the disputed domain name <dsgamesclub.com> fully incorporates the unregistered DS trademark, adding the descriptive term “game,” which could refer to Complainant’s products sold under the DS mark, the Panel majority concludes that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. E.g., Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, supra.

With respect to “3DS,” however, the Panel unanimously declines to recognize the existence of a common law mark.

Complainant contends that the distinctive feature of marks such as NINTENDODS or NINTENDO 3DS are the terms “DS” or “3DS,” respectively. The Panel finds however that the distinctive features of the NINTENDODS and NINTENDO 3DS marks are not the initials comprising product names such as “DS” or “3DS,” but the company name (and famous mark) NINTENDO itself.¹²

The Panel observes that the alphanumeric combination “3D” is commonly used as a short-form reference for “three-dimensional.” The alphanumeric string “3DS” might have a connotation for Internet users that is not associated with Complainant and its products. This possibility reinforces the Panel’s determination that a stronger showing of Internet-user association of “3DS” with Complainant and its products is needed to establish unregistered trademark rights.

Complainant also contends that the use of the descriptive terms “downloadcenter,” “gamesfree,” and “gamesclub” in combination with the terms DS and 3DS makes obvious that the disputed domain names are designed to attract traffic based on Complainant’s trademarks, because the descriptive terms are associated with Complainant’s products. As noted above, the Panel is prepared to rule that confusion is more likely as a result of the use of those descriptive terms in the right circumstances; however, under the Policy, the existence of a trademark must be established before a panel can examine whether descriptive terms added to a trademark make a disputed domain name confusingly similar.

Unlike the case with DS, Complainant’s supplemental filing provides scant evidence of the development of secondary meaning for the term “3DS.” While a high volume of early sales may portend a successful product launch, and over time support a panel’s determination that Complainant has unregistered rights in the “3DS” term, the evidence at present based on the product release of March 2011 is not sufficient for this Panel to conclude that the record establishes “3DS” as a standalone, unregistered trademark.

Consequently, Complainant has not established the existence of trademark in the term “3DS” when used without Complainant’s other marks. Therefore the Panel rules that the Amended Complaint fails the first test under Policy paragraph 4(a)(i) as to the disputed domain names <3dsdownloadcenter.com> and <download3dsgamesfree.com>. Accordingly the Panel will not address the question of confusing similarity for those two disputed domain names.¹³

In summary, the Panel unanimously concludes that the requirements of paragraph 4(a)(i) of the Policy are fulfilled as to the nine disputed domain names <nintendodsicenter.com>, <nintendo3dscenter.com>, <dsigamescenter.com>, <dsidownloadservice.com>, <nintendodsiclub.com>, <ndsicenter.com>, <nintendodsicentre.com>, <nintendodsigameslist.com> and <nintendowiicenter.com>. The majority of the Panel concludes that the requirements of paragraph 4(a)(i) are also fulfilled as to the disputed domain name <dsgamesclub.com>.

ii. Rights or Legitimate Interests

With respect to the nine disputed domain names that the Panel has ruled meet the requirements of Policy paragraph 4(a)(i), the Panel also concludes that Respondents have no rights or legitimate interests, as explained below. The majority of the Panel also concludes that Respondents have no rights or legitimate interests with respect to the disputed domain name <dsgamesclub.com> for the same reasons.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services;

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if the complainant makes out a prima facie case and that prima facie case is not rebutted.

Complainant avers that Respondent is not commonly known by the disputed domain names, is not an authorized distributor or dealer, and has no license or authorization from Complainant to use its trademarks. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant. Moreover, the Panel finds there is nothing in the record that indicates that any of the other Respondents are commonly known by the respective disputed domain names, that they are authorized distributors or dealers, or have license or authorization from Complainant.

Complainant also contends that the disputed domain names direct traffic to websites infringing Complainant’s trademarks and copyrights, in addition to offering unauthorized downloads of Complainant’s copyrighted products.

From the Panel’s online viewing of some of the websites, annexes to the Complaint and other archives available to the Panel, it appears that all of the disputed domain names have recently routed to websites that displayed similar content. That content, the Panel finds, includes Complainant’s trademarks and images from Complainant’s proprietary video games and cover art. Respondents’ websites also include offers to join fee-for-membership services that will enable users to download tens of thousands of copyrighted software programs either belonging to Complainant or compatible with Complainant’s handheld and console video gaming platforms.

Thus, as Complainant points out, the web sites are commercial sites, which generate revenue. The Panel considers that such activity is not only using Complainant’s trademarks to compete with Complainant’s products and services, but also, this use of the disputed domain names demonstrates Respondents’ lack of a legitimate noncommercial interest in, or fair use of, the disputed domain names. See, e.g., Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 (finding no noncommercial or fair use where "there is a use with the intention of commercial gain of the disputed domain name").

Finally, the Panel also finds that the record establishes that Respondents’ commercial activities undertaken through use of the disputed domain names are not bona fide under the Policy.¹⁴ See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.

Filing no response, Respondents have not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of their “rights or legitimate interests” in using the disputed domain names.

Therefore the Panel unanimously concludes that the requirements of Policy paragraph 4(a)(ii) are fulfilled with respect to the above-listed nine disputed domain names. The majority of the Panel concludes that the second element of the Policy is also fulfilled with respect to the remaining disputed domain name <dsgamesclub.com>.

iii. Registered and Used in Bad Faith

With respect to the ten disputed domain names found by the Panel to be confusingly similar to Complainant’s trademarks, the Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel infers that Respondents were aware of Complainant’s trademarks and product names, which were first used and registered in the 1980s, many years before Respondents’ registrations.

With respect to six of the disputed domain names, the Panel finds that the NINTENDO mark was deliberately adopted by Respondents and that this is a strong factor supporting a finding of bad faith registration. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 ("Bad faith may be found where a domain name is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith."); Nintendo of America v. Marco Beijin, Bejen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, supra ("the word 'POKÉMON' is obviously a well-known mark," such that use "by someone with no connection or legal relationship with the Complainant suggests opportunistic bad faith"); Rediff.com India Ltd. v. Daniyal Waseem, WIPO Case No. D2010-0346 ("By incorporating wholly Complainant's REDIFF trademark long after the mark had attained fame, it is suggestive of bad faith on the part of the Respondent."). Together with the commercial content displayed by Respondents on the websites, the Panel concludes that Respondents registered these six disputed domain names in bad faith.

This leaves for consideration four remaining disputed domain names. With respect to <dsigamescenter.com>, <dsidownloadservice.com> and <ndsicenter.com>, the Panel finds that the content of all of Respondents’ web sites establishes their knowledge of Complainant and its trademarks prior to registration. Respondents did not incorporate in these disputed domain names such famous marks of Complainant as the NINTENDO mark. However, these Respondents did adopt other trademarks of Complainant and the Panel unanimously finds that the concerned Respondents registered these three disputed domain names planning to trade on the value of those marks. This conclusion is strengthened by the fact that some of the registrants for these disputed domain names also used the NINTENDO mark in its entirety for other websites displaying similar content soliciting commercial memberships and offering unauthorized sales of Complainant’s products.

For similar reasons, the majority of the Panel finds that the disputed domain name <dsgamesclub.com> was registered to trade on the value of Complainant’s DS mark.

The Panel finds that Respondents deliberately attempted to attract Internet users to their websites for commercial gain, by creating a likelihood of confusion with Complainant’s marks. The Panel unanimously concludes, therefore, that Respondents registered the nine above-mentioned disputed domain names in bad faith.¹⁵ The majority of the Panel also finds that <dsgamesclub.com> was registered in bad faith.

The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain names by Respondents:

1. Sale of unauthorized products in competition with Complainant. Evidence provided on line and in annexes in the record demonstrates that Respondents’ websites are and were used to promote unauthorized products in competition with those sold by Complainant. The Panel concludes that this activity evidences bad faith use by Respondents. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kashia (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070.

2. Creating a false appearance of affiliation. The record establishes that the websites to which the disputed domain names route display or displayed Complainant’s NINTENDO Marks, as well as Complainant's video game characters and video game cover art. As pointed out by Complainant, the content of Respondents’ websites is also evidence of bad faith, because the content falsely suggest an affiliation with Complainant. E.g., Viacom International Inc. v. Niek Giavedoni, WIPO Case No. D2008-2002 (finding that the appearance of characters from the South Park show on the homepage of respondent's web site, combined with linking to copyrighted material of the complainant without authorization and the use of the disputed domain name <southparkzone.com>, gives the "false impression of an official, endorsed or affiliated website").

3. Cyberflight. The Panel finds that Respondents have engaged in “cyberflight.” The actions by several Respondents upon learning of Complainant’s efforts to enforce its trademark rights – including the changes in domain name ownership at various times in the past twelve months and in early August 2011 when Complainant sought leave to amend the Complaint – are further evidence of Respondents’ bad faith. See, e.g., HSBC Holding, plc. v. c/o HSBCINTERNATIONAL.COM / Juanita Saya / Abby Holdings, WIPO Case No. D2009-1001 (citing Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688; CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407; Piaggio & C.S.p.A. and Piaggio USA, Inc. v. Schieffelin & Company, LLC, Zachary Schieffelin, WIPO Case No. D2008-1896).

4. Failure to maintain accurate contact details with the Registrar. With the exception of Respondent Alex Wong, all Respondents either failed to maintain complete and accurate registrant contact address details or refused to accept delivery of the Center’s written notifications of the Amended Complaint. This failure to maintain accurate information is a violation of Respondents’ agreements with the Registrar and constitutes bad faith use.

5. Failure to respond to Complaint or demand notices. Finally, under the circumstances of this proceeding, the election by Respondents to refrain from filing responses is further evidence of bad faith.¹⁶

The Panel therefore unanimously concludes that the nine above-mentioned disputed domain names found to be confusingly similar to Complainant’s marks were also registered and used by Respondents in bad faith under paragraph 4(b)(iv) of the Policy. The majority of the Panel also reaches the same conclusion with respect to the remaining disputed domain name <dsgamesclub.com>.

7. Decision

The Complaint is granted in part and denied in part.

For the reasons described above, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following nine domain names be transferred to Complainant:

<nintendodsicenter.com>, <nintendo3dscenter.com>, <dsigamescenter.com>, <dsidownloadservice.com>, <nintendodsiclub.com>, <ndsicenter.com>, <nintendodsicentre.com>, <nintendodsigameslist.com>, and <nintendowiicenter.com>.

The majority of the Panel further orders that the domain name <dsgamesclub.com> be transferred to Complainant.

Since the Panel unanimously finds that the Complaint has not established the subsistence of trademark rights in the term “3DS” in the absence of the use of that term in combination with other trademarks of Complainant, the Complaint is denied as to the disputed domain names <download3dsgamesfree.com> and <3dsdownloadcenter.com>.

Jeffrey D. Steinhardt
Presiding Panelist

Frederick M. Abbott
Panelist

David E. Sorkin
Panelist
(Concurring in part, dissenting in part)

Dated: October 21, 2011

David E. Sorkin Concurring in Part, Dissenting in Part

I concur in the decision of the Panel, except that I do not believe Complainant has proved that the disputed domain name <dsgamesclub.com> is identical or confusingly similar to a mark in which Complainant has rights, and therefore dissent from the Panel's decision as to that domain name.

Complainant has sold millions of Nintendo DS game units, and has provided the Panel with various published references to its DS handheld game unit and platform, asserting that that "[t]he term 'DS' is a well-known way to refer to the Nintendo DS game system in a shorthand manner." (Complainant's Response to Panel Procedural Order No. 3, at 3.) But Complainant has failed to demonstrate any instances in which "DS" standing alone is sufficient to identify Complainant's game system; to the contrary, every one of the exhibits Complainant offers as evidence of rights in DS also contains the term "Nintendo" in some form.

I do not believe that the evidence offered by Complainant is sufficient to demonstrate common-law rights in DS, and therefore am unable to find that Complainant has met its burden of proof with regard to the domain name <dsgamesclub.com>. In all other respects I join in the Panel's decision.

David E. Sorkin
Panelist
(Concurring in Part, Dissenting in Part)
Dated: October 21, 2011

¹ The six transferred disputed domain names were <nintendo3dscenter.com>, <dsigamescenter.com>, <3dsdownloadcenter.com>, <dsidownloadservice.com>, <nintendodsiclub.com>, and <download3dsgamesfree.com>.

² The late transmission to the Center of Complainant’s response to Order No. 3 is considered by the Panel below.

³ The Panel is satisfied that Complainant and its group of related companies share substantial interests in various NINTENDO-branded products and trademarks. “Complainant” will therefore be used in this Decision to refer to Complainant and those related companies.

⁴ The Panel has undertaken limited research by visiting the websites to which the disputed domain names route, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.

⁵ Complainant brought the initial Complaint and Amended Complaint against a single respondent. As explained below, the Panel believes the proceeding is properly cast as being against several Respondents. For clarity, when using the singular “Respondent” to describe Complainant’s allegations, this Decision refers to Respondent Administrator Lunarpages, Alan Smith.

⁶ The allegations respecting notices and changes of ownership are extensively documented in Complainant’s submissions.

⁷ See note 5 above.

⁸ The first of Complainant’s three applications to add disputed domain names was made before panel appointment.

⁹ Complainant also owns Community Trademark Registration No. 009383316 for the mark N3DS, registered February 2, 2011. Since Complainant did not introduce this trademark into the record of these proceedings, the Panel will not address any potential bearing it might have had.

¹⁰ With respect to the names NDSi and DSi, Complainant’s response to Order No. 3 directed the Panel’s attention to portions of the pre-existing record listing trademark registrations, and added to the record copies of their registration certificates. On the basis of those registrations, the Panel has accepted that those trademarks exist, as noted above.

¹¹ In addition to the material submitted by Complainant, the Panel did a brief search engine query for the term “DS” on the Internet. In the first several pages of results, the vast majority of references were related to Complainant’s game, and there were no references among those results to video gaming or handheld games unrelated to Complainant’s.

¹² While it is theoretically possible that a single mark could contain more than a single distinctive term, the Panel does not find that to be the case at present with these marks of Complainant.

¹³ In any case, the Panel’s examination of whether the disputed domain names are confusingly similar to trademarks of Complainant is not assisted by Complainant’s allegations that the websites to which the disputed domain names route make infringing use of Complainant’s other trademarks (such as NINTENDO). E.g., WIPO Overview 2.0 paragraph 1.2 (“The content of a website . . . would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements”).

¹⁴ Since Respondents’ websites promote unauthorized products, this case is distinguishable from instances in which a respondent uses the disputed domain name to make bona fide offers solely respecting products that a complainant itself placed on the market.

¹⁵ This conclusion also applies to the <nintendodsigameslist.com> domain name despite the appearance of the disclaimer noted above. It is well established that the existence of a disclaimer cannot cure bad faith when bad faith has been shown by other factors. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (citing Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181)).

¹⁶ It is true that Respondent Administrator Lunarpages, Alan Smith did respond. For purposes of the bad faith determination, however, the Panel views Respondent’s gesture of filing the model response form without providing any particularized response or argument as being no better than a complete refusal to respond to proceedings.