Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Nintendo of America, Inc., a corporation organized and existing under the laws of the State of Washington, with its principal place of business at Redmond, Washington, USA.

Respondent is Matt Gudehus, an individual resident of the State of Iowa, resident of Urbandale, Iowa, USA.

The domain name at issue is "nintendo-gamecube.com".

The registrar of the disputed domain name is Register.com, Inc. of New York, New York (the "Registrar").

This proceeding was commenced in accordance with the Uniform Domain Name Dispute Resolution Policy dated October 24, 1999, (the " ICANN Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy dated October 24, 1999, (the "ICANN Rules") which were incorporated into the terms of a domain name services agreement entered into between Respondent and the Registrar.

The Complainant submitted its complaint in this proceeding on or about October 26, 2000. The Respondent submitted its response to the complaint on or about December 21, 2000. The WIPO Arbitration and Mediation Center thereafter appointed the undersigned to act as a one-member Panel to decide this dispute.

According to the Complainant's unchallenged allegations, which are therefore accepted as true for purposes of this proceeding, Complainant is the owner of numerous registrations of NINTENDO as a trademark for video game and entertainment products.

In July 2000, Complainant's parent, Nintendo Co., Ltd. of Kyoto, Japan, applied for registration of NINTENDO GAMECUBE as a mark for Complainant's then-next generation video game console. In the ensuing weeks, participants in Nintendo chat rooms and bulletin boards on gaming Web sites, such as "ign.com", speculated that Nintendo's next-generation video game console would incorporate the word "cube" or "game cube." On August 24, 2000, Nintendo officially unveiled its next-generation video game console, christening its NINTENDO GAMECUBE. Two days previously, on August 22, 2000, the Respondent registered "nintendo-gamecube.com" as a domain name. Respondent thereafter listed the name for sale at "greatDomains.com" with a "list price" of U.S. $18,000.

Complainant contends that NINTENDO-GAMECUBE is confusingly similar to its registered and famous NINTENDO trademarks; that the Respondent has no rights or legitimate interests in NINTENDO-GAMECUBE as a second level domain name; and that Respondent registered and has used NINTENDO-GAMECUBE in bad faith.

In its e-mail response dated December 28, 2000, Respondent "agrees that the domain name is confusingly similar to "Nintendo" and goes on to state that "[t]hat is the desirability of the domain name of "nintendo-gamecube.com". Respondent further "agreed" in his response that he had no rights or legitimate interests in respect of the disputed domain name. On the issue of bad faith, Respondent's entire response consisted of the statement: "The domain name ("nintendo-gamecube.com") does not lure customers away from Nintendo, but rather promotes an interest in GAMECUBE."

Under paragraph 4(a) of the ICANN Policy, a Complainant may obtain a compulsory transfer of a domain name if it "proves," to the satisfaction of a Panel, three predicates:

(1) that the domain name registered by a Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) that the respondent has no rights or legitimate interests in the disputed domain name; and

(3) that the domain name has been registered and used in bad faith.

In the present case, the above three elements have been "proved" to the satisfaction of the Panel. The Respondent has admitted the first two elements. With regard to the bad faith element, Respondent's admitted attempt to sell, for U.S. $18,000, a domain name in which Respondent admittedly has no legitimate interest, and which Respondent admits is confusingly similar to Complainant's registered NINTENDO marks, clearly demonstrates that Respondent registered and has used the domain name in bad faith within the meaning of the ICANN Policy.

For the reasons set forth above, the Panel finds in favor of the Complainant. The Registrar is hereby directed to transfer the domain name "nintendo-gamecube.com" to the Complainant.

James W. Dabney
Sole Panelist