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Nintendo of America Inc. v. Jerry Radl, Fusion Media Solutions

WIPO Case No. D2001-1020

Outcome
Transfer
Domain names
pokemonplanet.net
Complainant
Nintendo of America Inc.
Respondent
Jerry Radl, Fusion Media Solutions
Panelist
Richard G. Lyon
Decided
25 Sept 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1020.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl,

and Fusion Media Solutions, Inc.

Case No. D2001-1020

1. The Parties

Complainant is Nintendo of America, Inc., a Washington (USA) corporation with

its principal office in Redmond, Washington USA, represented by Beth A. Colgin

of Perkins Coie LLP, Seattle, Washington USA.

Respondents are Jerry Radl, an individual who resides in Layton, Utah USA,

Fusion Media Solutions, Inc., a Utah (USA) corporation, and pokemonplanet.net,

an entity whose provenance is unknown and may be fictitious. Radl is listed

as the administrative and billing contact for the Domain Name (defined in the

following section), pokemonplanet.net is listed as registrant, and the Whois

database lists Fusion Media Solutions, Inc. at the same address as Radl.

2. The Domain Name and Registrar

The domain names at issue (the Domain Name) is <pokemonplanet.net>.

The registrar is Network Solutions, Inc.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received the complaint

on August 13, 2001 (electronic and hard copy versions). The Center verified

that the complaint satisfied the formal requirement of the ICANN Uniform Domain

Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name

Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant

made the required payment to the Center.

On August 15, 2001, the Center transmitted, via email to the Registrar, a request

for registrar verification in connection with this case. The Registrar transmitted

via email to the Center its Verification Response on August 16, 2001, confirming

that the Respondent pokemonplanet.net is the registrant and that Respondent

Radl is the administrative and billing contact for the Domain Name.

On August 17, 2001, the Center transmitted to the Respondents its Notification

of Complaint and Commencement of the Administrative Proceeding, via post/courier

and e-mail. Correspondence sent to the email addresses listed with the Registrar

was returned as "undeliverable," but the courier's record indicates delivery

to Respondents on August 20, 2001.

Respondents have not replied to the Complaint. On September 10, 2001, the Center

notified Respondents Radl and pokemonplanet.net by email of their default, at

the email addresses listed with the Registrar. These were returned as undeliverable,

"host unknown."

The formal date of the commencement of this administrative proceeding is September 19,

2001.

Complainant requested a single panelist and Respondent did not opposed. The

Center invited Richard G. Lyon to serve as a panelist. Having received Mr. Lyon's

Statement of Acceptance and Declaration of Impartiality and Independence, on

September 19, 2001, the Center transmitted to the parties a Notification

of Appointment of Administrative Panel and Projected Decision Date of October

3, 2001. The Sole Panelist finds that the Administrative Panel was properly

constituted and appointed in accordance with the Rules and Supplemental Rules

and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy.

Jurisdiction extends to all Respondents: pokemonplanet.com because it is the

registered owner, and Radl and Fusion Media Solutions, Inc. by virtue of service

of the Complaint.

4. Factual Background

Complainant, a wholly owned subsidiary of Nintendo Co., Ltd., of Kyoto, Japan,

is an international marketer and distributor of video games, software, and accessories.

Some of its most famous products use the word Pokemon. Complainant and

its affiliates own many trademarks based upon and incorporating this word around

the world, including thirteen in the United States. Products sold or licensed

by Complainant using this name are a world famous video game and related books,

accessories, clothing, and (most important for purposes of this case) trading

cards. Since its introduction in Japan in 1996 Pokemon products have grossed

over $15 billion in sales. Complainant advertises heavily, using its names and

marks, worldwide, and owns many domain names that include the word Pokemon.

Complainant has not licensed Respondents to use its marks or its name.

Respondents registered the Domain Name on February 27, 2000. On February 11, 2000,

Respondents registered <pokemonplanet.com> with the Registrar. Shortly

thereafter Respondents used both web sites to sell Pokemon-related merchandise,

including trading cards, and posted a link to <www.fusionmediasolutions.com>.

In August, 2000 the format of this web site changed to include several advertisements,

text immediately above the advertisements reading "[c]lick here to support us,"

an automatic link to a web site operated by Nexcite LLC (a company owned

in part by Respondents), and a disclaimer of any affiliation with Complainant.

In June 2000, Complainant notified Respondents by email of the registration

of <pokemonplanet.com>, requesting cessation of such use and transfer

of that domain name to Complainant. By email, Respondent Radl declined. Immediately

following its discovery of the revised <pokemonplanet.com> site, on August

4, 2000, Complainant's counsel again wrote to Respondents, again requesting

transfer of the <pokemonplanet.com> name. That same day Respondent Radl

telephoned Complainant's counsel, confirming his ownership of the <pokemonplanet.com>

site and informing counsel of his ownership of the Domain Name. He confirmed

his use of both sites to sell Pokemon merchandise, and advised counsel that

he had received offers to sell the two domain names. He asked if Complainant

would be interested in purchasing them. Counsel declined but offered to reimburse

Respondents' cost of registration and transfer expenses in return for transfer

of them to Complainant. Respondent Radl said that he would retain an attorney

[1]. Neither Respondents nor anyone acting on their behalf

ever contacted Complainant again.

Respondents deactivated their two websites in December 20, 2000, and the <pokemonplanet.com>

name was released in January 2001, enabling Complainant to acquire it. Complainant

brings this proceeding to acquire the Domain Name.

5. Parties' Contentions

The parties' contentions may be summarized as follows:

Complainant:

The Domain Name incorporates its valuable mark. With a common word added to

the mark and incorporated into the Domain Name, Respondents' use of the Domain

Name is likely to cause confusion as to ownership or affiliation of the Domain

Name. Respondent registered the Domain Name subsequently to Complainants products'

gaining their worldwide popularity Complainant has not licensed Respondents,

and none of the words in the Domain Names is associated with Respondents or

any independent business of theirs; thus they have no legitimate interest in

them. Bad faith is established by Respondents' knowledge of Complainant's mark,

the timing of the registration of the Domain Name, an offer to sell the Domain

Name for an amount in excess of their costs of registration, Respondents' sale

of Complainants' products on the site using the Domain Name, and the liklihood

– indeed certainty – of confusion with Complainant's web sites.

Respondents:

Respondents have not responded to the Complaint. The emails and report of telephone

conversations between Respondents and Complainant's counsel submitted with the

Complaint do not contain any arguments justifying Respondents' use of the Domain

Names.

6. Discussion

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles

the Administrative Panel is to use in determining the dispute:

"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:

(1) that the Domain Name registered by the Respondent is identical or confusingly

similar to a trademark or service in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect to

the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each item. Respondent's default does

not automatically result in judgment for the Complainant. The Panel will consider

Respondents' emails submitted with the Complaint, although, as noted, these

do not include any material response to the factual allegations or legal argument

in the Complaint.

Identity and Confusion.

The Domain Name incorporates Complainant's popular product name and marks,

and is therefore likely to cause confusion as to the ownership of the site.

The addition of planet at the end of the Domain Name does not mitigate

this confusion, as many panels have held. The disclaimer on the site likewise

does not mitigate the confusion.

Legitimate Interest.

Nothing in the record suggests any legitimate interest of Respondent in the

Doman Name. Complainant has not licensed Respondents to use its marks or sell

its products, and there is nothing to indicate that Respondents are known by

either Pokemon or planet. The record reveals only an illegitimate

use, dependent upon unauthorised use of Complainant's mark.

Bad Faith.

By using the Domain Names to sell Complainant's products, Respondents have

shown bad faith in use of the Domain Name. The format of the site (and the <pokemonplanet.com>

site) strongly suggests that they obtained "click-through" revenues from the

site,[2] another improper use of the Complainant's

mark for commercial purposes. See Policy, ¶4(b)(iv). While there is no direct

evidence of bad faith in registration, that may be inferred from the timing

of the registration – several years after the Pokemon name became famous, the

lack of any legitimate connection between the mark and Respondents' business,

and the subsequent unauthorised exploitation of Complainant's mark.

7. Decision

For the foregoing reasons, the Administrative Panel orders that the registration

of the Domain Name be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: September 25, 2001

Footnotes:

1. The substance of the telephone conversation

is supported by sworn declaration submitted with the Complaint. Unlike many

such declarations submitted by parties in these domain name proceedings, the

declaration properly contained a recital of what was said, without conclusionary

comments by the declarant. Respondent has submitted nothing that contradicts

Complainant's version of the facts.

2. A web site owner is paid click-through

advertising revenues from having visitors to a web site subsequently click on

a link or banner advertisement which leads the visitor to a second web site.

Shields v. Zuccarini, 89 F. Supp. 2d 634, 640 (E.D. Pa. 2000) (the latter

reference includes the court's observation that use of a famous mark for click-through

revenue is "exactly the type of conduct the [Anticybersquatting Consumer Protection

Act] is designed to prevent"); see also Nokia Corp. v. Nokiagirls.com,

WIPO Case No. D2000-0102 (click-through

scheme described as a "free ride" on Complainant's marks). This sort of arrangement

illustrates a reason why a web site owner might want a well known mark included

in its domain name.

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