WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nintendo of America Inc. v. Domain Privacy Group / Domain Admin

Case No. D2013-0322

1. The Parties

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

Respondent is Domain Privacy Group of Burlington, Massachusetts, United States of America / Domain Admin, OCC of Henderson, Nevada, United States of America, represented by Steven L. Rinehart, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wiiu.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2013. On February 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20 and February 21, 2013, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 27, 2013.

The Center verified that the Complaint together with the amended 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 February 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 20, 2013. On March 19, 2013, Respondent’s representative sent an email communication to the Center requesting to extend the Response due date to March 25, 2013. On March 19, 2013, Complainant objected to Respondent’s extension request. On March 20, 2013, taking into account Respondent’s reasons and in consideration of Complainant’s objection, the Center granted the extension of Response due date until March 23, 2013. The Response was filed with the Center on March 24, 2013.

The Center appointed Bradley A. Slutsky, Frederick M. Abbott and David E. Sorkin as panelists in this matter on April 12, 2013. 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 March 27, 2013, Complainant sent an email request seeking permission to file a further statement in response to Respondent’s Response. On March 28, 2013, Respondent sent an email objecting to Complainant’s request. Having considered the Complaint and Response as well as Complainant’s request and Respondent’s objection, on May 22, 2013 the Panel issued Administrative Panel Procedural Order No. 1 (the “Order”) granting Complainant’s request to file a further statement. The Order also permitted Respondent to respond. On May 30, 2013, Complainant submitted a further statement. On June 6, 2013, Respondent submitted a supplemental response.

4. Factual Background

Complainant markets and distributes video game systems, software, and accessories, including under the marks WII and WII U. Complainant has trademark registrations for the WII mark which applications date back at least as early as April, 2006, and has trademark registrations for the WII U mark which applications date back at least as early as August, 2011. According to the information provided by the Registrar, the disputed domain name <wiiu.com> was registered by Respondent on January 13, 2004.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it announced its Wii console in June, 2006 and that it quickly became one of the best-selling video game consoles of all time. Complainant asserts that in June, 2011 it announced the Wii U – the successor to the Wii console. Complainant asserts that the Wii U console also was an instant marketplace success. Complainant asserts that Respondent “first registered the [disputed d]omain [n]ame on September 15, 2012, and renewed it on February 11, 2013” and that the disputed domain name “resolves to a website that generates revenue for Respondent by offering for sale and advertising a variety of video game related products and services.” Complainant asserts that the disputed domain name is identical to Complainant’s WII U mark and confusingly similar to Complainant’s WII mark.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent allegedly registered the disputed domain name with knowledge of Complainant’s trademark rights, does not hold any trademarks for WII U, is not an authorized dealer, distributor, or licensee for Wii U products or services, and is using the disputed domain name to confuse users and serve paid advertising links. Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because Respondent allegedly is using Complainant’s trademark to attract consumers to Respondent’s site and generate revenue therefrom including through “commercial links to products that are directly related to and competitive with Complainant’s own products”, because Complainant’s marks are so well-known that Respondent must be attempting to capitalize on them, because the disputed domain name is identical to Complainant’s WII U mark, and because Respondent allegedly registered the disputed domain name after Complainant announced its Wii and Wii U products.

In its “Further Statement Of Complainant Nintendo Of America Inc. Pursuant To UDRP Rule 12”, Complainant asserts that the currently-named registrant of the disputed domain name first registered the disputed domain name on September 15, 2012, that different legal entities were the named as the registrant for the disputed domain name through at least January, 2008 with a new registration taking place each time the registrant’s name was changed, that “the movement of the [disputed d]omain [n]ame among various registrants and from one privacy service to another indicates bad faith and merits a determination that the latest transfer is a new registration”, and that there is no evidence the currently-named registrant has any connection to the January, 2004 registration.

B. Respondent

Respondent asserts that Oceanside Capital Corp. (“OCC”) is a venture capital company that was formed in 1996, that Andy Tran is a member of OCC’s board of directors, that Mr. Tran registered the disputed domain name in 2004 on behalf of OCC, that he did so in connection with an OCC joint venture called “We Invest in You”, that Complainant allegedly is intentionally misrepresenting the registration date of the disputed domain name and thereby allegedly engaging in reverse domain name hijacking, that Complainant’s rights in the WII and WII U marks arose after the registration of the disputed domain name, that “[t]he [d]isputed [d]omain [name] resolves only to a generic landing page, and always has. The Respondent does not derive cost-per-click (CPC) revenue from the [d]isputed [d]omain [name], and any cost-per-click advertisements appearing on the landing page are placed there automatically by the Complainant’s registrar”, that Respondent has never offered the disputed domain name for sale (but that doing so for a generic acronym allegedly would not constitute bad faith), that “WIIU is merely descriptive of the future purpose for which Respondent intended to use the [d]isputed [d]omain [name], in connection with a planned website entitled ‘We Invest in You’”, that Respondent has not engaged in impermissible passive use of the disputed domain name, that Complainant waited nine years after the disputed domain name was registered before filing the Complaint, and that there allegedly are issues with Complainant’s applications to register the WII U mark.

In its “Supplemental Response In Accordance With Procedural Order No. 1”, Respondent notes that Section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right”, while Section 3.7 of WIPO Overview 2.0 states “Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.” Respondent also attaches a bank statement allegedly showing a relationship between OCC and SmartBuy, an email message indicating that the disputed domain name was registered in 2004 and then renewed in 2006 and 2007, an email message stating that the disputed domain name “has always been in the same account SMARTBUY2 since the year 2007”, a control panel screenshot showing “Primary Account Information” listing Oceanside Capital dba SmartBuy and Andy Tran, a letter from an individual at CalPOP stating that CalPOP has been doing business with Oceanside Capital dba SmartBuy since 2002 and worked on a project for the disputed domain name in 2004, IP address history information suggesting that the disputed domain name resolved to a CalPOP IP address as of March, 2005, an archive.org screenshot of an under construction page for the disputed domain name as of March 18, 2004, a letter on “Perk Systems” letterhead signed by “Lance Rhodes, President, Perk Corporation” stating that in 2005 “Perk Corporation” began work on a website for the disputed domain name but never received the necessary materials and eventually closed the task as incomplete, an invoice from “Perk Systems” for hardware and web design including web design for the disputed domain name (this invoice is dated February 3, 2005 and shows a USD 0 balance due as a result of the application of credits but is marked as paid on March 3, 2005), a February 28, 2005 check in the amount of the invoice (pre-credits) from SmartBuy, a declaration from Andy Tran (a) stating that OCC asked him to register the disputed domain name on January 13, 2004, (b) stating that work was commenced on a website for the disputed domain name, and (c) explaining changes in the registrar for the disputed domain name but asserting that the registrant has always remained the same, and a business plan for the alleged “We Invest in You” business.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant’s evidence of trademark registrations, applications, and use – as attached to the Complaint – demonstrate that Complainant has rights in the WII and WII U marks.

The disputed domain name is identical to Complainant’s WII U mark and confusingly similar to Complainant’s WII mark. The addition of “u” and “.com” at the end do not alter these conclusions. Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (finding <unlimitedwiidownloads.com> to be confusingly similar to Complainant’s WII mark).

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii).

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4(c).

Respondent has provided declarations and documentary evidence that OCC directed the registration and maintenance of the disputed domain name from January, 2004 forward, that the disputed domain name was registered in order to establish a website for a “We Invest in You” business venture, that third parties were hired and paid to set up the infrastructure for and work on such a website (though it appears that little web development work was done), and that there was a business plan for such a business. Complainant asserts that little to no progress was made to put this business plan in effect, and that some of Respondent’s allegations with regard to this business plan may not be sufficiently supported.

The “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” notes three “fundamental observations” in connection with the approval of the UDRP implementation documents. One such observation relates to the “minimalist” nature of proceedings under the Policy, and notes in part:

“The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of ‘abusive registrations.’ Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw. The policy relegates all ‘legitimate’ disputes - such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name - to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.”

See “archive.icann.org/en/udrp/udrp-second-staff-report-24oct99.htm”.

Given the evidence before the Panel and the streamlined nature of UDRP disputes, the Panel concludes that Complainant has not met its burden – for purposes of this administrative proceeding – of proving that Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “[disputed] domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).

As noted in Section 3.1 of the WIPO Overview 2.0, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

The disputed domain name was registered in 2004 whereas Complainant’s rights in the WII mark arose in 2006 and Complainant’s rights in the WII U mark arose in 2011. While it is true that “the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith.” Id. at Section 3.7. Thus, “Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.” Id.

In a proceeding such as this where there is no discovery, most of the evidence about the relationship among Andy Tran, SmartBuy, Oceanside Capital Corp., and “Domain Admin, OCC” is likely to be within the control of Respondent. Respondent has produced bank statements, unsworn correspondence from registrars, a control panel screenshot, unsworn correspondence from a hosting company and a web development company, and sworn declarations from Andy Tran indicating that the registration of the disputed domain name has always been on behalf of OCC. In the context of this expedited administrative proceeding without discovery, Complainant has not come forward with sufficiently probative evidence to rebut these assertions. Accordingly, the Panel concludes that Complainant has not met its burden – for purposes of this administrative proceeding – of establishing that the disputed domain name has been registered in bad faith under paragraph 4(a)(iii) of the Policy.

7. Reverse Domain Name Hijacking

The Response seeks a finding of Reverse Domain Name Hijacking in accordance with paragraph 15(e) of the Rules. In light of the number of name changes for the registrant of the disputed domain and the fact that some of these changes were concealed by privacy protection services, the Panel does not find that the Complaint was brought in bad faith or that Complainant engaged in Reverse Domain Name Hijacking.

8. Decision

For the foregoing reasons, the Complaint is denied.

Bradley A. Slutsky
Presiding Panelist

Frederick M. Abbott
Panelist

David E. Sorkin
Panelist

Date: June 19, 2013