WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nintendo Co., Ltd v. NameSilo, LLC / Customer Domain Admin, Nice IT Services Group Inc.

Case No. D2020-0344

1. The Parties

The Complainant is Nintendo Co., Ltd, Japan, represented by Allen & Overy LLP, France.

The Respondent is NameSilo, LLC / Customer Domain Admin, Nice IT Services Group Inc., Dominica.

2. The Domain Name and Registrar

The disputed domain name <3ds-paradise.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 26, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 16, 2020. The Panel finds that it was properly constituted. 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.

The Center received an email from the Complainant on March 31, 2020 seeking to file an amendment to the Complaint to change the requested remedy. On April 3, 2020, the Center informed the Complainant that this supplemental filing would be submitted to the Panel for consideration.

4. Factual Background

The Complainant is a limited company incorporated under Japanese law and headquartered in Kyoto, Japan. The Complainant manufactures and sells video game consoles and video games that can be played on these consoles in many countries around the world. These products include various models of game consoles, including Nintendo 3DS, Nintendo 3DS XL, New Nintendo 3DS and New Nintendo 3DS XL (hereafter “3DS Game Consoles”). The record shows that these are heavily advertised and are among the best-selling game consoles in the world. From the launch of the Nintendo 3DS in 2011 through the end of 2019, the Complainant sold nearly 76 million 3DS Game Consoles and more than 382 million 3DS video games.

The Complainant holds numerous related trademark registrations in many jurisdictions, including the following:

The Complainant also claims 3DS as an unregistered trademark that has become a distinctive identifier identified with the Complainant’s goods and services by reason of continuous use since February 2011.

The Complainant has “3DS” pages devoted to the “3DS” product line on its website at “www.nintendo.com” and versions for various languages and national markets. It also owns many domain names incorporating the term “3DS”, including <n3ds.co.nz>, <n3ds.tw>, <newnintendo3ds.es>, and<nintendo3ds.be>.

According to the Registrar, the Domain Name was created on May 19, 2015. It is registered in the name of the Respondent Nice IT Services Group Inc., showing a postal address in Dominica and a patently false telephone number (merely the sequence “1234567890”). The Registrar did not indicate when the current registrant acquired the Domain Name. The Respondent did not reply to correspondence from the Complainant or the Center and does not appear to operate a website corresponding to its name.

The Domain Name does not resolve to an active website at the time of this Decision. The Complaint attaches screenshots of the website formerly associated with the Domain Name (the “Respondent’s website”), and similar screenshots are available online through the Internet Archive’s Wayback Machine. The Respondent’s website was a French-language website headed “3DSParadise”, displaying the trademarked logos of many of the Complainant’s game consoles and video games, including the NINTENDO 3DS, SWITCH, WII, and GAMEBOY, along with copyrighted images of characters from Nintendo games. Users could register on the site and find information about Nintendo products and gameplay, exchange messages with each other, upload game sequences, and share information about where to download games without purchasing them from Nintendo or retailers. The Respondent’s website directed users to a “pirate” website furnishing unauthorized copies of the Complainant’s products. The Complainant counted 572 unauthorized 3DS games on that site in violation of its copyright. The Complaint includes evidence that the Respondent’s website was linked to other pirate and hacker sites and discussed in online forums as a source of unauthorized copies of 3DS games.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered N3DS and NINTENDO 3DS marks and its unregistered 3DS mark (the “3DS marks”), which the Respondent has no permission to use. The Respondent’s use of the Domain Name to display the Complainant’s marks and copyrighted material and promote downloading of pirated games cannot be considered a legitimate interest and reflects the Respondent’s bad faith in attempting to exploit the Complainant’s marks to attract Internet users for commercial gain. The Complainant cites Philip Morris USA, Inc. v. ADNHOSTING, WIPO Case No. D2007-1609 and Autodesk Inc v. wu xi si jie ruan jian you xian gong si, WIPO Case No. D2019-0771, to emphasize that the use of the Domain Name in connection with the offer of counterfeit goods cannot be a legitimate interest and is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

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

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

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

Under paragraph 15(a) of the Rules, “[a] Panel 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”.

6.1 Preliminary Matter: Supplemental Filing

The Policy, paragraph 4(i), affords only two remedies in the event a complainant prevails on all three elements: cancellation or transfer of the disputed domain name. Here, the Complaint as originally filed and as amended requested cancellation of the Domain Name.

After the proceeding commenced, the Complainant realized that “the website is known to provide unauthorized copies of 3DS games and third parties might therefore want to register it following mere cancellation”. Indeed, similar reasoning probably explains why complainants normally request transfer rather than cancellation.

Neither the Policy nor the Rules contemplate amendments to complaints or responses, or supplemental filings, except in response to a deficiency notification or if requested by the Center or the Panel. Supplemental filings are generally discouraged in the interest of conducting expeditious administrative proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.

In this case, the Respondent has been notified and has not replied. The change in the election of remedy does not prejudice the Respondent or materially affect the conduct of the proceeding. Accordingly, the Panel accepts the Complainant’s supplemental filing and notes its election of preferred remedy.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name incorporates the Complainant’s unregistered 3DS mark in its entirety and is similar to its registered N3DS and NINTENDO 3DS marks, adding the English dictionary word “paradise” following a hyphen, which does not avoid confusing similarity. An unregistered, common law mark may serve as the basis for a UDRP complaint where there is sufficient proof that it has acquired distinctiveness over time through advertising, sales, and public recognition (see WIPO Overview 3.0, section 1.3). The record includes evidence that the widely advertised and commercially successful 3DS Game Consoles and associated video games have been commonly referred to as “3DS” since 2011.

The generic Top-Level Domain name (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Policy. Id., section 1.11.2.

The Panel concludes, therefore, that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent has not advanced rights or legitimate interests, and none are apparent from a perusal of the record and the Respondent’s website associated with the Domain Name. The Respondent appears to have used the Domain Name for a website that displays several of the Complainant’s trademarks and copyrighted images without permission and allowed site users to upload and link to pirated copies of the Complainant’s games. This can hardly be considered either a “bona fide offering of goods or services” or noncommercial “fair use” within the meaning of the Policy, paragraph 4(c). The Domain Name carries a high risk of implied affiliation, and the associated website was used for illicit activity, factors that taken together militate against a finding of fair use and therefore legitimacy. See WIPO Overview 3.0, section 2.5.

Accordingly, the Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent was clearly aware of the Complainant’s well-established 3DS marks; they are displayed on the Respondent’s website, along with the Respondent’s trademarked and copyrighted game character images. It can safely be assumed that the Respondent meant for the Domain Name to attract Internet users interested in the Complainant’s products. The economics of the Respondent’s website are obscure, but the Complaint attaches a February 2020 SimilarWeb report showing the distribution of ad/referral traffic from the Respondent’s website, prominently including links to sites where it is possible to download unauthorized copies of the Complainant’s games, in some cases for “free” and in others for what appears to be a lower price than the typical retail rate for genuine versions supported by the manufacturer. According to the SimilarWeb report, the greatest amount of linked traffic from the Respondent’s website went to another French-language site, “TUTO4U” (currently hosted at “tuto4u.unblog.fr”), with the tag line, “Cracker votre Nintendo Switch et 3DS dès maintenant!” (Hack your Nintendo Switch and 3DS starting now!) That site features commercial product advertisements as well as articles, blog posts, and download files or links. The Panel finds sufficient evidence on this record to determine that the Respondent targeted the Complainant’s 3DS marks to mislead Internet users for commercial gain.

The examples of bad faith in Policy paragraph 4(b) are not exclusive, and the Panel also considers that the Respondent’s use of the Domain Name for a site facilitating transactions in pirated or counterfeit goods must also be considered bad faith within the meaning of the Policy, even without evidence of direct profit to the Respondent.

There are additional reasons supporting an inference of bad faith on the part of this Respondent. The Panel notes that a Reverse WhoIs search demonstrates that the Respondent owns hundreds of domain names. The Respondent may be more than a domain name investor, however. It has been the respondent in at least two other WIPO UDRP proceedings and several before the Forum. The pattern in these cases has been that, as in the current proceeding, the Respondent did not file a response; in each of these cases the disputed domain name was transferred to the complainant after a finding of bad faith. In Clifford Chance LLP v. Customer Domain Admin, Nice IT Services Group Inc., WIPO Case No. D2019-2295 and Clifford Chance LLP v. Customer Domain Admin, Nice IT Services Group Inc., WIPO Case No. D2019-2211, the disputed domain names included the name of a global law firm. Those domain names were used for fraudulent emails purporting to come from the complainant’s personnel. Many of the domain names owned by the Respondent, according to the Reverse WhoIs search, similarly appear to target company names and brands or lend themselves to such scams as described in the cited UDRP decisions, such as <abakus-group-sa.com>, <beneficialbankplc.com>, <globalmedicscare.com>, <gulfpetroleumcompany.com>, <prayforsantafearchdiocese.org>, <rabo-login.info>, and <support-paypal-signin.com>. Indeed, one of them, <switch-paradise.com>, is similar to the Domain Name in this proceeding, considering that the Complainant’s SWITCH products are also mentioned on the Respondent’s website and linked pirate sites, and the term “paradise” accompanies the product name in both domain names.

The Panel concludes that the Domain Name was registered and used in bad faith and that the Complainant prevails on the third element of the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <3ds-paradise.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: April 29, 2020