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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis
Case No. D2000-1563
1. The Parties
The Complainant in this administrative proceeding is Nintendo of America, Inc. whose principal place of business is 4820 150th Avenue NE, Redmond, Washington, 98052, U.S.A.
The Respondent in this case is Ken Lewis of Tasc, Inc., whose mailing address is 491 Baltimore Pike, Bldg 316, Springfield, PA, 19064, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is <pokemon-store.com> registered with Register.com in New York, NY, U.S.A.
3. Procedural History
A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 11, 2000.
On November 21, 2000 a Verification Response was received from Register.com which served to: (1) confirm that Register.com was in receipt of a copy of the Complaint; (2) confirm that Register.com is the registrar of the domain name; (3) confirm that Ken Lewis of Tasc, Inc. is the current Registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar’s WHOIS database for the Registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; and (5) indicate that the Uniform Dispute Resolution Policy is applicable to the domain name in dispute.
On November 22, 2000, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount.
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier, email), dated November 23, 2000. The Notification set a deadline of December 12, 2000 by which the Respondent could make a Response to the Complaint. Respondent did not submit a response. A Notification of Respondent Default was sent by the WIPO Center to Respondent and Complainant by email on December 13, 2000. No Response or other document has been received by the WIPO Center or the Administrative Panel from the Respondent since the Notification of Default. This Panel, therefore, finds that Respondent received notice of the Complaint and failed to submit a response as required by Rule 5. As a result, Respondent is in default and, under Rule 14(a), this Panel shall "proceed to a decision on the complaint." Accordingly, this Panel shall proceed to a decision based on the allegations in the complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO.
On December 29, 2000, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on December 29, 2000, was January 11, 2001.
4. Factual Background
Complainant, Nintendo of America ("Nintendo"), provided evidence that it has U.S. Trademark registrations for the following trademarks:
Additionally, Complainant provided evidence that it holds trademark registrations for POKEMON in 21 other countries.
Complainant markets several video games under the name of POKEMON and licenses a wide range of POKEMON products including books, clothing and stuffed animals. According to Complainant, POKEMON was the second most successful toy brand in sales in 1999 in the United States. Worldwide, the POKEMON franchise has grossed more than $15 billion since its introduction in 1996.
In addition to games and licensed products, Nintendo has opened two stores under the name POKEMON CENTER in Japan and has announced plans to open additional POKEMON CENTER shops around the world, including the United States.
Respondent is the current Registrant of the domain name <pokemon-store.com> which was registered on July 28, 1999.
5. Parties’ Contentions
Complainant claims that Respondent has registered a domain name that is confusingly similar to a trademark in which Complainant has rights. Complainant asserts that because the domain name incorporates the trademark in its entirety and merely adds a generic term "store" it is confusingly similar to Complainant’s mark.
Complainant contends that Respondent has no rights or legitimate interest in the domain name. According to Complainant, Respondent has not used the domain name in connection with a bona fide offering of goods and services. Similarly, Complainant asserts that Respondent has not made a legitimate noncommercial or fair use of the domain name because it merely points to a page that says "Coming Soon!". Additionally, according to Complainant, Respondent is not commonly known by a name or nickname related to <pokemon-store.com>. Nor has Complainant licensed or otherwise permitted Respondent to use the trademark or register any domain name incorporating the mark.
Complainant asserts that Respondent has registered and is using the domain name in bad faith. According to Complainant the trademark is a unique name, and Respondent had notice of the mark because it is a well-known trademark. Thus Complainant asserts that Respondent must have registered the domain name with Complainant’s trademark in mind. Additionally, Complainant indicates that in the 18 months since Respondent registered the name it has failed to develop a web site associated with the domain name.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts
Identical or Confusingly Similar to Trademark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. trademark rights to the name POKEMON for multiple classes of goods and also holds trademark rights to POKEMON in many other countries. The domain name <pokemon-store.com> incorporates Complainant’s mark in its entirety. The primary focus of the domain name is Complainant’s mark. While in some circumstances the addition of generic terms may help to diminish the similarity between the domain name and the mark, in this case the addition of "-store" does not help to distinguish the domain name from Complainant’s trademark. Thus this Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights.
Respondent’s rights and legitimate interests in the domain name
Complainant has alleged that Respondent does not have any rights or legitimate interest in the domain name. Although, hypothetically, there are circumstances under which Respondent could claim a legitimate interest or right to this domain name, Respondent is in default and has failed to provide any such evidence. Thus the Panel finds that Respondent does not have any right or legitimate interest in the domain name.
Registration and use in bad faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain name has been registered and used in bad faith. Because the mark is unique and famous, Complainant alleges that Respondent must have registered the domain name with Complainant’s trademark in mind. According to the Complainant, this, along with the wholesale incorporation of the mark in the domain name and Respondent’s failure to develop a web site using the domain name, is evidence of bad faith.
Failure to use a domain name does not, by itself, generally constitute bad faith use of the name. However, where Respondent is in default, the Panel shall draw such inferences as are appropriate from the materials supplied to WIPO. In this case, Complainant has made a sufficiently strong argument that there is no reason other than a bad faith desire to benefit from the famous trademark held by Complainant for Respondent to have registered the name. In the absence of any explanation from Respondent, this Panel is directed by Rule 14(a) to "proceed to a decision on the complaint." Thus this Panel accepts Complainant’s allegation of bad faith.
This Panel decides that Complainant has shown that the Respondent has no legitimate interests in the domain name, that the domain name was registered and used in bad faith, and that the domain name is confusingly similar to a trademark in which Complainant has rights. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain name <pokemon-store.com> be transferred to Complainant.
Roderick M. Thompson
Dated: January 11, 2001