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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America Inc. v. Max Maximus
Case No. D2000-0588
1. The Parties
Nintendo of America Inc., a wholly-owned subsidiary of Nintendo Co., Ltd. of Kyoto, Japan
4820 150th Avenue NE
Redmond, WA 98052
James R. McCullagh
Perkins Coie LLP
1201 Third Avenue, 48th Floor
Seattle, WA 98101-3099
United States of America
Administrative and Billing Contact
60 Del rd. Stormstead
LA, WP 7900
ZA (South Africa)
H. Menlinclaan 1
2. The Domain Name and Registrar
The domain name at issue is:GAMEB0Y.com (GAMEB0Y spelled with the number zero in place of the letter "o"). It is registered with:Network Solutions Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America, Fax: 703-742-4777.
3. Procedural History
- On June 12, 2000, the Complaint was filed with the WIPO Arbitration and Mediation Center by e-mail (with hard copy received on June 15, 2000). The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules.
- On June 15, 2000, the Center acknowledged of receipt of the Complaint. On that date, the Center requested Register.com verification (NSI), and received the Registrar’s answer to that request on June 20, 2000.
- On June 21, 2000, the Center communicated to both parties a Notification of Complaint and Commencement together with communication records.
- On June 21, 2000, the Center received an e-mail from the respondent confirming receipt of the Notification of Complaint and Commencement of Administrative Proceedings. He requested additional information about the Notification of Complaint and asked "to receive as much as possible of the correspondence about this case".
- Rule 5 of Rules for Uniform Domain Name Dispute Resolution Policy requires the respondent to submit a response to the Provider addressing the matters contained therein within twenty days of the date of commencement of the administrative proceeding. As no such response was submitted, on July 11, 2000, the Center recorded a Notification of Respondent’s Default and communicated it to both parties. An e-mail was sent to the respondent and to Bruno Waes attaching the Notification of the Respondent’s Default.
- On July 21, 2000, the sole panelist agreed to the appointment. As required by the Rules, he filed a Statement of Acceptance and Declaration of Impartiality and Independence.
- On July 26, 2000, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties. This notification was in error concerning the arbitrator’s nationality and a corrected version, also dated July 26, 2000, was subsequently sent to the parties.
4. Jurisdictional Basis for the Mandatory Administrative Proceeding
Paragraph 4 of the ICANN Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph. A copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Annex 4 to the Complaint.
Under Paragraph 4(a) of the ICANN Policy, a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:
(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(2) The respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name was registered and is being used in bad faith.
The Administrative Panel finds that the complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.
5. Factual Background
The complainant owns a variety of intellectual property rights in respect of a video game system known as GAME BOY®. It filed with its complaint extensive evidence of trademark registrations for GAME BOY® in the United States, Japan and many other countries.
The complainant registered a website, GAMEBOY.com, with Network Solutions, Inc., (NSI) on April 15, 1998.
The domain name at issue, GAMEB0Y.com (GAMEB0Y spelled with the number zero in place of the letter "o"), was registered by the respondent on December 11, 1999.
On or about March 20, 2000, Nintendo was alerted to the GAMEB0Y.com website by a concerned parent whose son was directed to this site when searching for GAME BOY® websites. As Exhibit 35 to the Complaint, shows, while operative the site displayed sexually suggestive pictures of young boys.
As the respondent is not an authorized license of the complainant nor authorized to use the complainant’s mark, the complainant sent a cease and desist letter to the registrant on or about March 30, 2000. The letter informed the registrant that the domain name GAMEBOY.com was an unauthorized use of a Nintendo trademark and requested that he cease the unauthorized use voluntarily and transfer the name to Nintendo.
On or about April 25, 2000, Mr. Waes replied to Nintendo’s original e-mail message stating that he was only the "hosting provider" for the website and representing further that the owner was a 13 year old boy, and "I think it is easier to contact me with this matter."
In an e-mail dated May 4, 2000, Mr. Waes contacted the complainant’s legal department and offered to sell the GAMEB0Y.com domain name to the complainant for $100,000.
6. Parties’ Contentions
In the circumstances, the domain name at issue is confusingly similar to Nintendo’s GAME BOY® trademark, that the respondent has no rights or legitimate interests in GAMEB0Y.com, and that he has registered and is using the domain name in bad faith.
The Administrative Panel observes that, although served with notice of the proceeding, the respondent did not file a response to the complaint in a timely fashion.
7. Discussion and Findings
The Panel is constituted in order to determine whether the respondent’s registration of GAMEB0Y.com (GAMEB0Y spelled with the number zero in place of the letter "o") complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999). As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:
Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The complainant contends that the domain name at issue is "confusingly similar to a trademark or service mark in which the complainant has rights."
The Panel finds that the complainant has proved this element. In its view, the domain name GAMEB0Y.com is confusingly similar to the GAME BOY® trademark.
Secondly, the complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.
The Panel agrees that respondent has no rights or legitimate interests in respect of the domain name. The complainant’s rights and legitimate interests in the name GAME BOY® are manifestly long-standing and settled.
Thirdly, the complainant contends that the domain name has been registered and is being used in bad faith.
The Panel agrees. A review of the evidence filed in support of the Complaint shows that the GAMEB0Y.com website employed a depiction of the video game device, which together with the confusingly similar name, clearly gave the impression that the site was connected to GAME BOY® and Nintendo. Furthermore, the evidence shows that Mr. Waes offered to sell the site to Nintendo "for $100,000". This is clear evidence of bad faith under paragraph 4(b)(i) of the ICANN Policy.
In addition, the nature of the photographic material depicted at the site underscores the illegitimate and inappropriate attempt to identify the site with the complainant’s trademark and other rights.
It is unnecessary in the circumstances to deal with the complainant’s arguments regarding the use of a pseudonym. Suffice it to say that, given the nature of the material depicted on the site, the Panel has no doubt why a pseudonym was employed.
In the circumstances, the Administrative Panel has no doubt in concluding that the domain name has been registered and is being used in bad faith.
At paragraph 31 of the Complaint, the complainant requested that the Panel issue a decision that the contested domain name be transferred to it. In light of the findings made above and having regard to the remedies stipulated in Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name GAMEB0Y.com (GAMEB0Y spelled with the number zero in place of the letter "o") be transferred to the complainant, Nintendo of America Inc.
J. C. Thomas
Dated: August 1, 2000