The UDRP decision on the domain name Wiiu.com has been published by WIPO.
It appears the three member panel was very close to find Reverse Domain Name Hijacking (RDNH) had the domain not been owned under privacy.
The domain holder was represented by Steven Rinehart of Salt Lake City
After all Nintendo didn’t file its trademark for Wii until two years after the domain name was registered and not until 2011 some 7 years after the domain name was registered, for the term Wii U.
The domain name Wiiu.com was registered by an Andy Tran in 2004 to stand for “We Invest in You” well before Nintendo trademark for Wii in 2006 and Wii U in 2011.
However according to Actiontrip.com, Nintendo stated that they may go to the courts on this case quoting a representative from Nintendo as saying
“Nintendo’s efforts to recover the domain name through a Uniform Dispute Resolution Policy administrative proceeding were unsuccessful.
“Nintendo has a strong history of protecting against infringement of our intellectual property rights and we are continuing to review our legal options.”
Here are the relevant facts and findings by the three member panel:
“Complainant markets and distributes video game systems, software, and accessories, including under the marks WII and WII U. ”
“Complainant has trademark registrations for the WII mark which applications date back at least as early as April, 2006, and has trademark registrations for the WII U mark which applications date back at least as early as August, 2011. ”
“According to the information provided by the Registrar, the disputed domain name wiiu.com was registered by Respondent on January 13, 2004.”
“Respondent asserts that Oceanside Capital Corp. (“OCC”) is a venture capital company that was formed in 1996, that Andy Tran is a member of OCC’s board of directors, that Mr. Tran registered the disputed domain name in 2004 on behalf of OCC, that he did so in connection with an OCC joint venture called “We Invest in You”, ”
“Complainant allegedly is intentionally misrepresenting the registration date of the disputed domain name and thereby allegedly engaging in reverse domain name hijacking, that Complainant’s rights in the WII and WII U marks arose after the registration of the disputed domain name, that “[t]he [d]isputed [d]omain [name] resolves only to a generic landing page, and always has. ”
“The Respondent does not derive cost-per-click (CPC) revenue from the [d]isputed [d]omain [name], and any cost-per-click advertisements appearing on the landing page are placed there automatically by the Complainant’s registrar”, that Respondent has never offered the disputed domain name for sale (but that doing so for a generic acronym allegedly would not constitute bad faith), that “WIIU is merely descriptive of the future purpose for which Respondent intended to use the [d]isputed [d]omain [name], in connection with a planned website entitled ‘We Invest in You’”, that Respondent has not engaged in impermissible passive use of the disputed domain name, that Complainant waited nine years after the disputed domain name was registered before filing the Complaint, and that there allegedly are issues with Complainant’s applications to register the WII U mark.”
“Respondent has provided declarations and documentary evidence that OCC directed the registration and maintenance of the disputed domain name from January, 2004 forward, that the disputed domain name was registered in order to establish a website for a “We Invest in You” business venture, that third parties were hired and paid to set up the infrastructure for and work on such a website (though it appears that little web development work was done), and that there was a business plan for such a business.”
“Complainant asserts that little to no progress was made to put this business plan in effect, and that some of Respondent’s allegations with regard to this business plan may not be sufficiently supported.”
“Given the evidence before the Panel and the streamlined nature of UDRP disputes, the Panel concludes that Complainant has not met its burden – for purposes of this administrative proceeding – of proving that Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.”
Complainant also bears the burden of establishing that the “[disputed] domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
“The disputed domain name was registered in 2004 whereas Complainant’s rights in the WII mark arose in 2006 and Complainant’s rights in the WII U mark arose in 2011. ”
“While it is true that “the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith.” ”
“Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.”
In a proceeding such as this where there is no discovery, most of the evidence about the relationship among Andy Tran, SmartBuy, Oceanside Capital Corp., and “Domain Admin, OCC” is likely to be within the control of Respondent.
“Respondent has produced bank statements, unsworn correspondence from registrars, a control panel screenshot, unsworn correspondence from a hosting company and a web development company, and sworn declarations from Andy Tran indicating that the registration of the disputed domain name has always been on behalf of OCC. In the context of this expedited administrative proceeding without discovery, Complainant has not come forward with sufficiently probative evidence to rebut these assertions.”
“Accordingly, the Panel concludes that Complainant has not met its burden – for purposes of this administrative proceeding – of establishing that the disputed domain name has been registered in bad faith under paragraph 4(a)(iii) of the Policy.:
“The Response seeks a finding of Reverse Domain Name Hijacking in accordance with paragraph 15(e) of the Rules. In light of the number of name changes for the registrant of the disputed domain and the fact that some of these changes were concealed by privacy protection services, the Panel does not find that the Complaint was brought in bad faith or that Complainant engaged in Reverse Domain Name Hijacking.”
Steven L. Rinehart, represented the domain holder