Microsoft Corporation v. Kien Cao Trung
Claim Number: FA1512001653148
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Kien Cao Trung (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <playminecraft.us> and <minecraftgames.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2015; the Forum received payment on December 18, 2015.
On December 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <playminecraft.us> and <minecraftgames.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@playminecraft.us, postmaster@minecraftgames.us. Also on December 21, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 8, 2016.
On January 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant’s rights in the MINECRAFT mark stem from registrations throughout the world including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,252,394, registered December 4, 2012). Respondent’s <playminecraft.us> and <minecraftgames.us> domain names, registered in February 2013 are confusingly similar to the MINECRAFT mark as they include the whole mark and differ only through the addition of the country code top-level domain (“ccTLD”) “.us,” and the generic terms “play,” or “games.”
2. Respondent has no rights or legitimate interests in the <playminecraft.us> and <minecraftgames.us> domain names. Respondent has no rights in a trademark identical to the one at issue in this proceeding nor has Respondent been commonly known by the disputed domain names.
3. Further, Respondent’s use of the , <playminecraft.us> and <minecraftgames.us> domain names to display advertisements for and redirect users to third party games unrelated to Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
4. Respondent has registered or is using the <playminecraft.us> and <minecraftgames.us> domain names in bad faith. If Respondent is offering free downloads of Complainant’s MINECRAFT game, these copies are unauthorized and/or counterfeit and would disrupt Complainant’s business.
5. Additionally, Respondent’s use of Complainant’s MINECRAFT mark in connection with sites offering free downloads of Complainant’s game indicates an attempt to confuse and attract internet users for commercial profit. Finally, Respondent’s use of the <playminecraft.us> and <minecraftgames.us> domain names and the fame of the MINECRAFT mark demonstrate that Respondent had knowledge of Complainant’s rights at the time of registration.
6. Nothing in the record indicates that the Complainant has accepted Respondent’s proposal in (3) below.
B. Respondent
1. Respondent should not have been allowed to create the <playminecraft.us> and <minecraftgames.us> domain names by the registrar if Respondent’s registration was an infringement of Complainant’s mark.
2. Respondent only uses the domain names to advertise and Respondent does not choose what advertisements are chosen. Thus, since Respondent does not sell anything and has no control over the content of the advertisements Respondent should not be considered as having acted improperly.
3. Respondent proposes that either: (1) Respondent be allowed to extend the infringing domains and become an affiliate of Complainant; or (2) Respondent be allowed to extend one infringing domain for a year to redirect to Respondent’s new website which will be <freecraftgames.com>.
Complainant holds trademark rights for the MINECRAFT mark. Respondent’s domain names are confusingly similar to Complainant’s MINECRAFT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <playminecraft.us> and <minecraftgames.us> domain names, and that Respondent registered and uses the domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in the MINECRAFT mark through registration of the mark with trademark agencies throughout the world including with the UPSTO (e.g., Reg. No. 4,252,394, registered December 4, 2012). Registration of a mark with the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant next argues that the <playminecraft.us> and <minecraftgames.us> are confusingly similar to the MINECRAFT mark. The domains include the whole MINECRAFT mark and add the ccTLD “.us” and either the generic term “games” or “play.” The presence of a ccTLD does not affect a Policy ¶ 4(a)(i) analysis. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Generic terms also do not reduce confusing similarity in a domain name where the mark is the prominent feature of the domain. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). Thus, the Panel concludes that Respondent’s <playminecraft.us> and <minecraftgames.us> domain names are confusingly similar to the MINECRAFT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain names at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has not been commonly known by the <playminecraft.us> and <minecraftgames.us> domain names. WHOIS information identifies the Respondent as, “Kien Cao Trung,” which does not resemble the domain names. There is no other evidence in the record to indicate that Respondent is commonly known by the either of the domain names. Under such circumstances, the Panel concludes that Respondent is not commonly known by the <playminecraft.us> and <minecraftgames.us> domain names under Policy ¶ 4(c)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant next claims that Respondent’s use of the <playminecraft.us> and <minecraftgames.us> domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <playminecraft.us> domain to resolve to a website displaying various different video games with titles such as “Mine Clone minecraft,” “Minecraft Tower Defense,” and “Goodgame Empire.” This domain also includes a banner advertisement showing the Minecraft game and a button saying “play.” Users who click on the button are taken to another site which prompts the user to install software which serves the user advertisements. Respondent appears to use the <minecraftgames.us> to display various video games unrelated to Complainant and advertises games such as “Unlimited Ninja,” and “Guild Wars 2.”
Presumably Respondent profits from these resolving websites. The use of another’s mark for the purpose of generating profit through advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv). The Panel has considered Respondent’s explanation of the use of the domain names and concludes it is insufficient to establish a bona fide offering of goods or services.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent appears to use the <playminecraft.us> domain to display various video games and prompts the user to install software which claims to be the Minecraft game. Respondent has not denied this allegation. Bad faith has been found where a respondent uses a domain name confusingly similar to a mark in which a complainant has rights to sell counterfeit goods of the complainant. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). Thus, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant next claims that Respondent is attempting to use Complainant’s MINECRAFT mark to commercially benefit from confused users who mistakenly assume that Respondent’s domains are affiliated with Complainant and the MINECRAFT brand. Respondent’s <playminecraft.us> and <minecraftgames.us> resolving websites display the MINECRAFT mark and display advertisements for games unrelated to Complainant’s mark. Bad faith under Policy ¶ 4(b)(iv) exists where a respondent uses a domain that is confusingly similar to a complainant’s mark for the purposes of luring internet users for commercial profit. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). Panel concludes that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the MINECRAFT mark. Complainant argues that Respondent's prominent use of Complainant’s mark and the fame of the MINECRAFT mark indicate that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the <playminecraft.us> and <minecraftgames.us> domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <playminecraft.us> and <minecraftgames.us> domain names be TRANSFERRED from Respondent to Complainant
Bruce E. Meyerson, Panelist
Dated: January 25, 2016
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