WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson
Case No. D2001-0976
1. The Parties
Complainant is Nintendo of America, Inc., a Washington (USA) corporation with its principal office in Redmond, Washington USA, represented by Nicole J. Owren-Wiest of Perkins Coie LLP, Seattle, Washington USA.
Respondents are Thomas G. Watson, an individual who resides in Dallas, Texas USA, and Tyasho Industries, also of Dallas. Mr. Watson has submitted a Response on behalf of Respondents.
2. The Domain Names and Registrar
The domain names at issue (the Domain Name) is <pokemontrader.org>.
The registrar is Network Solutions, Inc.
3. Procedural History and Jurisdiction
The WIPO Arbitration and Mediation Center (the Center) received the complaint on July 31, 2001 (electronic version) and August 2, 2001 (hard copy). 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 3, 2001, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case. On August 3, 2001, the Registrar transmitted via email to the Center its Verification Response, confirming that the Respondent Tyasho Industries is the registrant and administrative contact for the Domain Name, and that WorldNIC Name Host is the technical contact.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on August 7, 2001, the Center transmitted to the Respondents its Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail.
Respondents have submitted email messages to the Center on August 3, 6, 7, and 15, 2001, and filed their Response on August 15 (email) and August 20 (hardcopy), 2001.
The formal date of the commencement of this administrative proceeding is September 13, 2001.
Complainant requested a single panelist and Respondent agreed. 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 13, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of September 27, 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 both Respondents: Tyasho because it is the registered owner, and Watson by virtue of his acknowledgment of ownership and response.
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 incorporate the term Pokemon. Complainant has not licensed Respondents to use its marks or its name.
Respondent registered the Domain Name on December 24, 1999, several years after Complainant's marks and products had become famous. Apart from the Domain Name,  Respondent's only connection to the name is that he is an avid customer of the products, especially the trading cards, which his four children "love."
There is no evidence of any actual commercial use of the Domain Name. Respondent states that the site is "under construction." A recent reference to the Domain Name yielded a page with Respondent Watson's email address and statements that Complainant was contesting Respondent's right to the Domain Name . In the Response, as in earlier correspondence with Complainant, Respondent states that his objective for the site is to provide an exchange for "aftermarket" sales of Pokemon trading cards, some of which have become valuable .
On March 9, 2001, Complainant's attorney sent a cease and desist letter to Respondent Tyasho. This was returned as undeliverable. There was subsequent written and telephone correspondence between Respondent Watson and Complainant's counsel, in which the parties made substantially the same contentions as they make now in this case. Respondents also invited Complainant to "make an offer" to acquire the Domain Name, to which Complainant offered to reimburse Respondents' costs of registration. Respondents stated that they were considering litigation against Complainant, and sought counsel by a notice on the Domain Name web site.
5. Parties' Contentions
The parties' contentions may be summarized as follows:
Complainant: The Domain Name incorporates its valuable mark. Particularly when a variant of the name one of its licensed products (trading cards) is added to the mark, Respondents' use of the Domain Name is likely to cause confusion as to ownership or affiliation of the Domain Name. Respondents 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 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' "disparaging" statements on his web site, and liklihood indeed certainty of confusion with Complainant's web sites.
Respondents: Respondents do not contest Complainant's ownership of the Pokemon marks, but asserts that "pokemontrader" is not the subject of a registered trademark, and that addition of trader in the Domain Name will not generate confusion because trader is the "dominant piece" of the Domain Name. Complainant could itself easily have registered the Domain Name, but did not. Respondents are not trafficking in domain names. Complainant should have anticipated an aftermarket in its trading cards, and use of the Domain Name as a site for this trading will foster competition. Respondents have never offered to sell the Domain Name to Complainant. Complainant has not carried its burden of proof on any of the necessary elements of its claim.
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.
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 trader a word descriptive of one of Complainant's most popular products -- at the end of the Domain Name only exacerbates this confusion . Respondents' contention that trader is the dominant word in the Domain Name is absurd and ignores the means that consumers use to search the Internet for useful sites, by providing a search engine with a term, product name, or mark identifying the object of the search (in this instance Pokemon) in order to review all relevant sites.
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, and the distinguishing word in the marks is distictive and well known. Respondents' proffered justification, creating a site for aftermarket sales of Complainant's trading cards, misses the point. While it may enhance competition to establish a site for that purpose, use of a name incorporating Complainant's mark for such a site, without Complainant's express consent, is a clear and intentional violation of Complainant's trademark rights. All of Respondents' contentions in this proceeding are based upon the premise that they are entitled to the Domain Name simply because they registered the Domain Names before the trademark owner did. The dispute resolution procedure embodied in the Rules was established to prevent just such cybersquatting.
Bad Faith. In describing their intended use of the Domain Name, as stated above (see paragraph 4 and footnote 3), Respondents have perforce admitted their bad faith in registration and use of the Domain Name. Respondents have candidly stated that they registered and intended to use the Domain Name that parroted Complainant's mark as a web site for aftermarket sales of Complainant's product. They intended their use of the Domain Name to attract to their site, for commercial purposes, persons seeking Complainant's websites, or those of persons authorized by by Complainant. This establishes bad faith. See Policy, 4(b)(iv).
For the foregoing reasons, the Administrative Panel orders that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Dated: September 24, 2001
1. Complainant describes the video game and trading card use as follows (Complaint, 16): " In the POKÉMON® Trading Card Game and in many of the other POKÉMON® games, the player assumes the role of a POKÉMON® trainer and travels through an imaginary world trying to collect specimens, trading game cards, of each POKÉMON® character. Once captured, the POKÉMON® characters may be trained for battle, or traded with other players, or they may become friends. The goal of the POKÉMON® Trading Card Game is to become the greatest POKÉMON® trainer ever by collecting each POKÉMON® character card. Since its U.S. debut in January 1999, more than 6 million children have played the POKÉMON® Trading Card Game."
2. Respondent states that he also owns the domain name <pokemontrader.com>, and requests that this name be "added to this proceeding." The Panel lacks jurisdiction to accommodate this request, but notes that its findings and conclusions in this case would apply with equal force to a case brought by Complainant aginst Respondent over that name.
3. Some of Respondent's statements on the web site are rather provocative: e.g., ". . . this huge corporation [Complainant] is trying to intimidate me into submission." This stridency does not, however, rise to the level of disparagement, as alleged by Complainant. Respondent also states that he seeks to retain counsel to assist him in this proceeding.
4. Response, p.5: " Since the cards are produced in varying amounts to stimulate demand and encourage competitionit is only natural to assume that there would be a market for the rarer cards.and consequently, money could be made in the selling of said cards."