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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America Inc. v. Baltic Consultants Limited
Case No. D2002-0449
1. The Parties
Complainant, Nintendo of America Inc., is a Washington corporation with its principal place of business in Redmond, Washington, United States of America. Complainant is a wholly owned subsidiary of Nintendo Co., Ltd. of Kyoto, Japan.
According to Tucow's Whois database, Respondent is Baltic Consultants Limited, which is located in Tortola, British Virgin Islands.
2. The Domain Name and Registrar
The disputed domain name is <pokemonl.com>, registered with Tucows, Inc., in Toronto, Ontario, Canada.
3. Procedural History
The Complaint was submitted to the WIPO Arbitration and Mediation Center ("the Center") by email on May 8, 2002. The Center received a hardcopy of the Complaint on May 13, 2002. The Center acknowledged receipt of the complaint on May 14, 2002.
The Center issued a request for Registrar Verification from the Registrar (Tucows, Inc.) on May 14, 2002. Tucows, Inc. responded on May 14, 2002, confirming the registration details and its receipt of a copy of the Complaint from Complainant.
A Formal Requirements Compliance Checklist was initiated by the Center, and completed on May 14, 2002. The Center determined that Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Policy"), in effect as of December 1, 1999 ("the WIPO Supplemental Rules"). The Panelist has independently reviewed the requirements and finds that Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.
Complainant paid the required fees for a single-member Panel on time and in the required amounts.
No formal deficiencies having been noted, on May 16, 2002, a Notification of Complaint and commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to Respondent (with copies to Complainant, Tucows, Inc. and ICANN), setting a deadline of June 5, 2002, by which Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Whois confirmations received from Tucows, Inc. and by post/courier to the indicated postal addresses. Having reviewed the communications records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On June 25, 2002, having received no formal Response from the designated Respondent, the Center transmitted to the Parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.
On July 11, 2002, the Center invited Leon Trakman to serve as the Sole Panelist in Case No. D2002-0449 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Leon Trakman’s Statement of Acceptance and Declaration of Impartiality and Independence was received on July 12, 2002. On July 12, 2002, the Center transmitted a Notification of Appointment of Administrative Panel and projected decision date of July 26, 2002. On July 12, 2002, the Center transmitted the case file to the Sole Panelist.
On July 14, 2002, the Center transmitted to the Panelist a notification of a change in the Complainant’s Authorized Representative.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant distributes video game systems, software and accessories. As part of its business, Nintendo owns the world-famous and distinctive POKÉMON® trademark. Nintendo and its affiliates presently market and distribute several POKÉMON® video games and licenses a wide range of POKÉMON® products, ranging from books to clothing to stuffed animals. The POKÉMON® trademark and POKÉMON® products have been widely advertised and extensively offered throughout the United States and worldwide. According to independent national sales data, as a toy brand in 1999, the POKÉMON® brand was second only to the Barbie® brand in sales, ahead of the third place Star Wars® brand. In 2000, the POKÉMON® franchise grossed more than $4.3 billion in the United States, and six of the industry’s 10 top-selling video games were POKÉMON® titles. Worldwide, the POKÉMON® franchise has grossed more than $14 billion since the original Japanese introduction in February 1996.
Among the most successful of the POKÉMON® products are the video games designed for use with Complainant’s hand-held GAME BOY® video game systems and the NINTENDO®64 home video game system. Nintendo currently sells many different POKÉMON® games in the United States: POKÉMON® Red & Blue, POKÉMON® Yellow, POKÉMON® Gold and Silver, POKÉMON® Crystal, POKÉMON® Stadium, POKÉMON® Pinball, POKÉMON® Snap, and POKÉMON® Trading Card Game. Complainant alleges that more than 30 million POKÉMON-related video games have been sold to date in the United States, and more than 85 million POKÉMON® video games have been sold worldwide.
Complainant has received seventeen trademark registrations from the United States Patent and Trademark Office ("PTO") for the POKÉMON® trademark, all of which are in full force and effect and are owned by Nintendo. In addition, Nintendo has registered, and actively uses, numerous domain names that incorporate its POKÉMON® trademark. Nintendo and/or its affiliates use these domain names to operate Web sites that provide information about POKÉMON® products to its consumers, including children. POKEMON.COM, which Nintendo registered on January 8, 1998, is the location of Nintendo's primary POKÉMON® Web site.
On August 24, 2000, Respondent registered the <pokemonl.> domain name with Tucows. In that same month, Complainant alleges that it became aware of Respondent's use of <pokemonl.com> via a consumer complaint. It states that a concerned parent emailed Nintendo to explain how her 10-year-old daughter had misspelled the domain name of Nintendo's official Web site and reached Respondent's www.pokemonl.com, a porn site.
Complainant alleges that it investigated the complaint and discovered that, as of October 12, 2001, Respondent had been routing the <pokemonl.com> domain name to its pornographic www.interracialsite.com Web site, which displayed sexually explicit photographs. Complainant provided documentation verifying this allegation, as it did in respect of each factual claim identified below.
On October 16, 2001, Nintendo sent Respondent a letter via email and the United States mail, requesting that it cease infringement of the POKÉMON® trademark by use of the <pokemonl.com> domain name and transfer ownership of that domain name to Nintendo.
By October 25, 2001, Respondent had changed the Web site corresponding to the <pokemonl.com> domain name. Internet users accessing "www.pokemonl.com" were now routed automatically to Respondent's "www.quacko.com" Web site, which featured online gambling.
By November 6, 2001, Respondent changed its use of the <pokemonl.com> domain name again. Visitors now were automatically routed to two online gambling Web sites that Respondent operated from the <supremecasino.com> and <quacko.com> domain names. Attempts to access the <pokemonl.com> domain name triggered the opening of the "www.supremecasino.com" and "www.quacko.com" Web sites in separate Internet browser windows. In a third window, an advertisement for the "www.supremecasino.com" Web site solicited visitors' email addresses in exchange for a chance to "win $1000 a week." Finally, a pop-up window appeared, further soliciting visitors to join Respondent's "Grand Free Raffle."
On or before November 6, 2001, Respondent changed its use of the <pokemonl.com> domain name again. Visitors to the site now were automatically routed to two online gambling Web sites that Respondent operates from the <supremecasino.com> and <quacko.com> domain names. Attempts to access the <pokemonl.com> domain name triggered the opening of the "www.supremecasino.com" and "www.quacko.com" Web sites in separate Internet browser windows. In a third window, an advertisement for the "www.supremecasino.com"Web site solicited visitors' email addresses in exchange for a chance to "win $1000 a week." Finally, a pop-up window appeared, further soliciting visitors to join Respondent's "Grand Free Raffle."
Computer users attempting to visit "www.pokemonl.com" also received a computer virus surreptitiously. Complainant alleges that Respondent structured the Web sites corresponding to <pokemonl.com> to transmit a Java script trojan/exception file to visitors and includes documentary evidence of such a virus.
On November 28, 2001, Nintendo's outside counsel wrote to Respondent, informing Respondent that its use of the <pokemonl.com> domain name infringed Nintendo's trademark rights. Nintendo's counsel also requested that Respondent immediately cease any and all use of the <pokemonl.com> domain name and transfer the same to Nintendo. The email version of this letter was returned as undeliverable, although correctly addressed to the email Respondent provided in its <pokemonl.com> registration.
On December 3, 2001, Nintendo's outside counsel received confirmation that the hard copy version of this letter had been delivered to Respondent.
On or about March 7, 2002, Respondent changed the Web sites and content corresponding to the <pokemonl.com> domain name. Visitors were automatically routed to the online gambling Web sites, "www.grandbankscasino.com" and "www.clubdicecasino.com". Both of these Web sites opened simultaneously, in separate Internet browser windows, upon any attempt to access "www.pokemonl.com". As before, a pop-up window also solicited visitors to join Respondent's "Grand Free Raffle."
On or before May 6, 2002, Respondent again changed the Web sites and content corresponding to the <pokemonl.com> domain name. Visitors attempting to access this domain name were now routed through a cascade of thirteen separate Internet browser windows offering pornography. All of these Web sites and Internet browser windows opened automatically, and many displayed sexually explicit photographs. Significantly, attempting to close the first windows that opened caused more to appear. Visitors to the site were required to shut down their Internet browser program entirely in order to exit Respondent's Web sites.
At both the time of filing the Complaint and the writing of this decision (July 15, 2002), Respondent was continuing to use the domain name <pokemonl.com> to redirect consumers to online pornography Web sites.
5. Parties’ Contentions
Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent has not contested the allegations of the Complainant.
6. Discussion and Findings
The Panel will evaluate each of Complainant’s contentions in order.
Firstly, the Panel concurs in the Complaint that the Domain Name <pokemonl.com> is confusingly similar to Nintendo's POKÉMON® Mark. It is apparent that Complaint’s trademark is both distinctive and world-famous. See Nintendo of America Inc. v. Beijin, WIPO Case No. D2001-1070 (November 5, 2001); Nintendo of America Inc. v. Pokemonplanet.net, WIPO Case No. D2001-1020 (September 25, 2001); Nintendo of America Inc. v. Tyasho Industries, WIPO Case No. D2001-0976 (September 24, 2001); Nintendo of America Inc. v. Tasc, Inc., WIPO Case No. D2000-1563 (January 11, 2001); Nintendo of America Inc. v. Gray West International, WIPO Case No. D2000-1219 (January 10, 2001); Nintendo of America Inc. v. Pokemon, WIPO Case No. D2000-1230 (November 23, 2000); Nintendo of America Inc. v. Lipson, WIPO Case No. D2000-1121 (October 29, 2000).
It is also established, including in prior panel decisions, that a user of a mark ordinarily "may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). The mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as specified in the Policy, paragraph 4(a)(i). This was so held in prior decisions in relation to POKÉMON® and POKÉMON® marks. See Nintendo v. Beijin, WIPO Case No. D2001-1070; Nintendo v. Pokemonplanet.net, WIPO Case No. D2001-1020; Nintendo v. Gray West International, WIPO Case No. D2000-1219.
Furthermore, the addition of a letter, or a misspelling of a trademark, falls within both the letter and spirit of the confusing similarity prohibited by the Policy. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001). There, for example, it was held that <nicholekidman.com> is " 'virtually identical and confusingly similar' to Nicole Kidman’s common law mark; the only difference is the purposeful misspelling, created by the addition of an 'h,' and it is well established . . . that such misspellings are actionable under the Policy"). See too Infospace v. Dominion Hill, Inc., WIPO Case Nos. D2000-1475 and D2000-1477 (January 22, 2001) in which it was held that <infosspace.com>, <ynfospace.com>, <inffospace.com>, <infospaace.com>, <infosppace.com>, <innfospace.com> and <infospacce.com> are confusingly similar to the trademark "INFOSPACE" because "the seven domain names at issue all fall within one letter of the registered trademarks and registered domain name belonging to Infospace". Similarly, in Nintendo of America Inc. v. Daniel Lopez, WIPO Case No. D2000-1166 (December 8, 2000), it was stated that: "Respondent's addition of the non-distinctive 'i-' to its domain name does nothing to reduce its confusing similarity with Complainant's NINTENDO marks." Finally, in Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588 (August 1, 2000), the Panel found that the <gameb0y.com> domain name, spelled with a zero, confusingly similar to the GAME BOY® trademark.
These self-same arguments apply, by analogy to Respondent's <pokemonl.com> domain name. Respondent’s <pokemonl.com> domain name incorporates the POKÉMON® trademark in its entirety, adding only the letter "L." The addition of this non-distinctive text does nothing to reduce the confusing similarity of Respondent's domain name with Nintendo's distinctive and world-famous mark. It is apparent that some Internet users, and likely children who are not adept on the computer keyboard, will access Respondent's domain name by searching for Nintendo's official POKÉMON® Web site, but misspelling Nintendo's POKÉMON® trademark. Such confusion is especially likely in this case. The letter "L" is immediately above the "." on the standard QWERTY keyboard. Therefore, pokemonl.com is a likely misspelling by a typist who inadvertently strikes an extra key while typing Pokemon.Com, which is the domain name of Nintendo's primary POKÉMON® Web site. As Complainant correctly complains, Respondent has registered domain names in the past consisting of other well-known trademarks with the letter "L" appended to them. For example, in NextCard, Inc. v. Baltic Consultants Limited, NAF Claim No. FA 97073 (June 1, 2001), it was held that "[t]he <nextcardl.com> domain name is confusingly similar to Complainant's federally registered NEXTCARD mark." In Bloomberg L.P. v. Baltic Consultants Limited, NAF Claim No. FA 95834 (November 20, 2000), it was held that ("[T]he domain name bloombergl.com is obviously intended to prey off internet users who mistype bloomberg.com.")
The Panel concludes that the variation or addition of a single letter or generic word in Complainant's mark is precisely what the 'Identical or Confusingly Similar' language of the ICANN Policy envisions."
Secondly, the Panel concurs in the Complaint that Respondent has no rights or legitimate interest in the Domain Name <pokemonl.com>. In particular, Nintendo has not authorized Respondent to use its POKÉMON® trademark, and Respondent has no independent rights in that mark. Accordingly, Respondent's unauthorized diversion of Internet traffic away from Nintendo's pre-existing, official www.pokemon.com Web site cannot be considered legitimate. The case of Sanrio Co. Ltd. v. Neric Lau, WIPO Case No. D2000-0172 serves as an appropriate analogy. There it was held: "Respondent cannot be said to have legitimately chosen the <sanriosurprises.com> domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondent’s interests in the domain name cannot be said to be legitimate." In the instant case, Respondent cannot be said to have legitimately chosen the <pokemon.com> domain name other than by seeking to create an impression of an association.
Respondent's use of the <pokemonl.com> domain name is also not reasonably characterized as a noncommercial or fair use under Policy, paragraph 4(c)(iii). Respondent has consistently routed the <pokemonl.com> domain name to distinctly commercial purposes, for the marketing of pornography or gambling, or both. It would also appear from the facts that Respondent owns and more evidently, operates some, if not all, of these pornography and gambling sites. As a result, Respondent receives a direct commercial benefit from its registration and use of <pokemonl.com>.
Respondent's use of the domain name is not only misleading to consumers: it also harms Nintendo’s business interests by diverting consumers to pornography and gambling via www.pokemonl.com, see Policy, paragraph 4(c)(iii). It is reasonable to assume that consumers logically associate Respondent's domain name, which incorporates the POKÉMON® trademark, with Nintendo's POKÉMON® video games and other licensed products. In directing consumers away from Nintendo's products online to pornography and gambling, it is reasonable to conclude that <pokemonl.com> creates an association in the minds of at least some consumers that Nintendo identifies itself with pornography and/or gambling. Moreover, it is difficult to sustain the argument that Respondent is commercially associated with the domain name, <pokemonl.com>. While the reference to "POKEMONL" could be accorded either a sexual or a gambling connotation, it is not reasonable to assume that it is commercially reasonable for Respondent to alternate between sexual and gambling sites in the context of this case. Nor does the use of its sites establish a meaningful commercial association between the use of the word "POKEMONL" and Respondent "Baltic Consultants Limited." See Policy, paragraph 4 (c)(ii). Nor, too, does the use of the letter "L" at the end of "POKEMON" provide any such reasonable association.
Respondent’s lack of a legitimate interest in the domain name "POKEMONL" is also evident in the fact that it has sought registration of the domain name after Nintendo had established POKÉMON® as a globally recognized mark and after Nintendo had begun to use www.pokemon.com as the address of its primary POKÉMON® Web site.
Thirdly, the Panel concurs with the Complaint that Respondent is using the domain name <pokemonl.com> in bad faith. It is apparent that Respondent registered this domain name to take advantage of a likely misspelling by typists of pokemon.com, the domain name of Nintendo's primary POKÉMON® Web site. There are two primary reasons for so concurring. As a practical matter, a typist who inadvertently strikes an extra key while typing pokemon.com— in reaching for the "." before the "com"—may well type Respondent's <pokemonl.com> domain name instead. As a matter of past practice, in at least two prior instances, Respondent registered domain names consisting of other well-known trademarks with the letter "L" appended to them. See NextCard v. Baltic Consultants Limited, NAF Claim No. FA 97073 (<nextcardl.com>); and Bloomberg L.P. v. Baltic Consultants Limited, NAF Claim No. FA 95834 (<bloombergl.com>).
Confirming such evidence of bad faith is Respondent’s consistent use of <pokemonl.com> to attract, for commercial gain, Internet users to pornography and online gambling Web sites. Both the Policy and previous UDRP panel decisions specifically proscribe Respondent's efforts to secure commercial benefit from confusion it has fostered among consumers in relation to Nintendo's POKÉMON® mark. See Policy, paragraph 4 (b)(iv). See too Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, WIPO Case No. D2000-0209 (June 5, 2000); Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000),; Nokia Corp. v. Nokiagirls.com, WIPO Case No. D2000-0102 (April 18, 2000). In sum, these cases evidence that Respondent has intended to be, and has been, a commercial free rider at the expense of Nintendo.
In addition, in a number of other cases, it has been held that Respondent acted in bad faith, in registering and using domain names that are likely misspellings of other well-known trademarks, and that Respondent intended to misdirect consumers to pornography or online gambling Web sites. For example, in Campmor, Inc. v. Baltic Consultants Limited, NAF Claim No. FA 103138 (February 5, 2002), it was held that "[b]y using Complainant's mark in the disputed domain name [wwwcampmor.com], Respondent attempted to redirect Internet users to its gambling website who intended to visit www.campmor.com but inadvertently omitted the period between "www" and "campmor." In Trump v. Baltic Consultants Limited, NAF Claim No. FA 101814 (Dec. 10, 2001) it was held that Respondent's registration and use of the "wwwtrumptaj.com" and "wwwtrumpcardcasino.com" domain names displayed opportunistic bad faith. In particular, "the addition of 'www' to Complainant's marks [was] an effort to capitalize on users' probable typographical mistakes." Similarly, in Netscape Communications Corp. v. Baltic Consultants Limited, WIPO Case No. D2001-0519 (June 9, 2001), it was held that the "The word 'NETSCAPE' is obviously a well-known mark used by Complainant in its day-to-day business. The use of an almost identical word [nstscape] by someone with no connection with Complainant suggests opportunistic bad faith." In NextCard v. Baltic Consultants Limited, NAF Claim No. FA 97073, it was held to similar effect that: "[t]he registration and use of the <nextcardl.com> domain name is evidence of bad faith when Respondent attracts Internet users to its website for commercial gain by creating a likelihood of confusion, and linking that website to other websites containing pornographic material." So too, in KnightRidder.com/Knight Publishing Co. v. Baltic Consultants Limited, NAF Claim No. FA 96944 (April 30, 2001), it was held that "Respondent registered and uses "wwwthatsracin.com" in bad faith to profit by diverting Internet traffic intended for Complainant's "www.thatsracin.com" website to its own location." Finally, in Bloomberg L.P. v. Baltic Consultants Limited, NAF Claim No. FA 95834, it was held that "Respondent is preying on Complainant['s] mark and the goodwill associated with it to divert internet users to its own web sites where it provides pornographic services. Such use clearly violates ICANN Policy 4(b)(iv)."
Further evidencing Respondent’s deliberate and bad faith use of misspelling famous marks in registering domain names is apparent from the manner in and date at which the registration of <pokemonl.com> took place, namely, August 24, 2000. Five of the panel decisions in the paragraph above specify that the date of Respondent's domain name registrations occurred within the same three-day period in late August of 2000. See Campmor v. Baltic Consultants Limited, NAF Claim No. FA 103138 (wwwcampmor.com registered on Aug. 24, 2000); Trump v. Baltic Consultants Limited, NAF Claim No. FA 101814 (wwwtrumptaj.com and wwwtrumpcardcasino.com registered on August 22 and 23, 2000); NextCard v. Baltic Consultants Limited, NAF Claim No. FA 97073 (nextcardl.com registered on August 24, 2000); KnightRidder.com/Knight Publishing v. Baltic Consultants Limited, NAF Claim No. FA 96944 (wwwthatsracin.com registered on August 23, 2000); Bloomberg L.P. v. Baltic Consultants Limited, NAF Claim No. FA 95834 (bloombergl.com registered on Aug. 24, 2000). It is reasonable to conclude, in light of this consistent practice over a concentrated period of time, that Respondent was deliberately engaging in a consistent scheme to misspell well-known marks. In each case, the intention was to divert and increase Internet traffic to its own Web sites.
Nor would it be reasonable to maintain that, after an extensive line of decisions declaring that Respondent was acting in bad faith in relation to other well-known trademarks, it was somehow acting in good faith in this case. Its practice of misspelling is consistent from case to case. Respondent could hardly claim that it was unaware of POKÉMON® trademark, given the wide use and popularity of this otherwise unusual trademark. Respondent's awareness of Nintendo's rights in the POKÉMON® trademark at the time of registration, by itself, suggests bad faith. As was stated in Nintendo v. Beijin, WIPO Case No. D2001-1070, "the word 'POKÉMON' is obviously a well-known mark," such that use "by someone with no connection or legal relationship with [Nintendo] suggests opportunistic bad faith." To a similar effect, in Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000), it was held that Respondent’s knowledge of Complainant’s mark at the time of registering confusingly similar domain name suggests bad faith). See too, The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (March 17, 2000).
Respondent’s bad faith is also evident in the fact that the trademark POKÉMON® is a "highly distinctive and fanciful" mark. See Nintendo v. Pokemon, WIPO Case No. D2000-1230. Indeed, "[s]uch trademark uniqueness, together with Respondent's wholesale incorporation of the POKÉMON® trademark . . . creates a confusingly similar domain name and weighs in favor of finding bad faith." Nintendo v. Gray West International, WIPO Case No. D2000-1219. See too Neuberger Berman, Inc. v. Jacobsen, WIPO Case No. D2000-0323 (June 12, 2000). Of note is the related decision, Parfums Christian Dior v. Quintas, WIPO Case No. D2000-0226 (May 17, 2000), it was held that "the Domain Names [in dispute] are so obviously connected with such a well-known name and products that its [sic: their] very use by someone with no connection with the products suggests opportunistic bad faith."
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the following domain name be transferred to Complainant:
Leon E. Trakman
Dated: July 26, 2002