How The Owners Of 'WiiU.Com' Won Their Case Against Nintendo

Over the weekend, we learnt that Nintendo lost its case to take over the website name wiiu.com -- a domain registered way the hell back in 2004, before "Wii" even existed as a word or trademark. So what exactly did "wiiu.com" stand for nine years ago?

According to the full text of the World Intellectual Property Organization's judgment, "wiiu.com" originally referred to some kind of semi-acronym meaning "We Invest In You." It was the name of a venture of Oceanside Capital, a venture capital company, and the domain was registered by a Mr Andy Tran on behalf of the company back in 2004.

“WIIU is merely descriptive of the future purpose for which Respondent intended to use the disputed domain [name], in connection with a planned website entitled ‘We Invest in You’,” is how the domain holder described it.

Nintendo, in its filing, alleged that wiiu.com was "first registered on Sept. 15, 2012 and renewed... on Feb. 11 2013." But the domain's owner said Nintendo was alleging that a technical change in domain registration data was the same as a new registration, where wiiu.com was still under "an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate."

The WIPO panel also found that Nintendo did not meet its burdens of proving that the name had been registered and used in bad faith, nor that it proved that its owners "had no rights or legitimate interests in respect of the disputed domain name." For those reasons, the decision was denied, highly unusual considering how successful game companies have been in the past at recovering domains that reference their trademarks.

Nintendo on Monday released a statement acknowledging its case had failed, while saying the company would examine its remaining legal options. Meantime, the official Wii U web site is www.nintendo.com/wiiu

Nintendo of America, Inc., v. Domain Privacy Group/Domain Admin [World Intellectual Property organisation Arbitration and Mediation centre. h/t Hon. Neil Brown, QC Australia]


Comments

    I think it would have been an injustice, frankly, if Nintendo got to take a domain that pre-dated their product on the sheer basis of "our brand is the more popular/recognisable one".

    They could at least offer to buy it. I do like that they have means to protect themselves against people who DO register domains in bad faith, such as someone camping playstation9.com hoping for a $50,000,000 payoff in 42 years, but if the domain was registered for unrelated and legitimate reasons, then this was the right decision.

      I reckon they probably could have just bought the domain from its current owners for less than they're spending on all this legal crap anyway.

        Then they'd feel like they were just encouraging others to camp their domains. They're fighting for the principle - the problem is, they wrongly assumed the principle was in their favour.

    Examine what remaining legal options? You created a brand without first securing the domain. Stupid you. If they don't want to sell it to you, that's your problem.

    I have never been to or tried to go to nintendo64.com, gamecube.com or wii.com.

    Not really a big issue.

    I think this is the wrong decision, sorry.

    wiiu.com is not being used by another brand or company, it's simply squatted. This isn't the same as say steam.com is/was, where someone was actually using that domain for something when Valve stated the Steam service.

      I disagree. The original domain would have been registered as an acronym based another entity's intellectual property, pre-dating the WiiU. The fact that Nintendo have decided to name their console the "WiiU" and register the domain "Wiiu.com" has nothing to do with the fact that someone else wanted it, for their own legitimate reasons, and therefore purchased it. Whether they're still using it or not has nothing to do with the fact that they OWN it, for legitimate reasons, rather than bought it with the intention of reselling it later.
      You can't force someone to sell their house because you've decided you need it more than they do.

        They don't own it for legitimate reasons. They might have in the past, but they're no longer using it for legitimate reason now. It's now just domain squatted.

        Domain names are important "internet real estate", we shouldn't stand by and let them be rorted like this. If someone has a legitimate use for a domain, they should have the opportunity to use it.

          Ownership of digital property is definitely a grey area, I'll acknowledge that the same rules don't apply to something like a house, or a car, or a piece of toast. I guess my whole thing is that Nintendo shouldn't be able to force them to give it up. If they want it so much, they should buy it off them. If they're not using it, they have to have a price which will persuade them to part with it.

          So if I buy an investment property but leave it untenanted for a while, someone else should be able to sue me for the property because they could use it?

            Absolutely!

            There's properties like that all through Australia. Rich people buying up land because they can, they don't even rent out the houses on the land. All the while people can barely afford to rent places because there's a housing shortage.

            When something is in scarcity, there should be rules around hoarding such items to prevent abuse, like the example you just gave.

              There's plenty of land in Australia going very cheap - literally thousands of properties for less than $50k, and hundreds of those for less than $10k. I can see properties in NSW - Australia's most populous state, going for $4500. Sure, that's in remote and rural areas, but if you want land in a regional city - say Wagga Wagga or Albury-Wodonga - you don't even have to move into the six-figure range to pick some up. There are houses in both cities that start at about $125k. The "scarcity" is over desirable land in capital cities. If any of your "rich people buying up land" was offered a lot of money for an untenanted property, I'm sure they'd sell it.

              You're argument is the basis for eminent domain - that unless you meet the expectation for "proper use" of a property, it can be taken off you. And eminent domain usually advantages "rich people buying up land" - it's the "people can barely afford rent" that get screwed.

              In this case, the owners previously had a legitimate use for the domain name, so they weren't squatting. When Ninty announced the Wii U, I'm sure they thought "great, we're not using it any more, so Nintendo - being a large multinational - will surely pay us a lot of money for it", and confirmed they still held the registration, then waited for the offer. And then got sued. I'm not going to shed any tears for Ninty or the venture capitalists who own the domain now, but the balance here is right, to my mind, and creates a precedent that doesn't allow anyone with deep pockets to rip a domain name off you just because they want to use it to make money themselves.

                It's not about money at all. It's about the scarcity of the resource.

                If you're not using it you shouldn't have any right to it. These should not be used as investment objects, they're simply names, unique names. There's no investment put into these names, no-ones built something here, they've just filled out a form and paid a registration fee.

                Now it's reached a time where they don't want to use it any more, but someone else does have a legitimate use for it. They should have it removed from their possession if they don't want to use it. There's shouldn't be any right given to squatters.

                  That's just about the most facetious argument I've ever heard. So any domain name you don't actively use should be stripped off you for no recompense if someone else comes up with a use for it at a later date? Even Marx and Lenin would consider that over-reaching.

                  In terms of scarcity, wiiuconsole and nintendowiiu are available, as well as thousands of other variations. And they've already got wii.com. But that one specific domain must be handed to Nintendo for free because they decided 2 years after the original registration to use the same made up name (which, at least in the original registrant's case, actually means something other than being crap at spelling) over the literally millions of other potential names for their console, and several years later decided to use a variation of that name that clearly somebody else already owned? I often consider myself a bit of a socialist, but sorry, that's nucking futs.

    Somebody in Nintendo screwed up, if Nintendo thought they could prove it was only a year old.

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