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.
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 Microsoft’s 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 WiiU.com 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”.…
