Microsoft Corporation v. MIKE TISDALE
Claim Number: FA1612001706437
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is MIKE TISDALE (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minecraftshop.net>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2016; the Forum received payment on December 8, 2016.
On December 11, 2016, FastDomain Inc. confirmed by e-mail to the Forum that the <minecraftshop.net> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@minecraftshop.net. Also on December 12, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a provider of computer software and related services to consumers and businesses around the world.
In November of 2014, Complainant acquired Mojang AB, publisher of the MINECRAFT video game and owner of the MINECRAFT mark.
Complainant therefore has rights in the MINECRAFT trademark and service mark by reason of its registration with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,252,394, registered December 4, 2012).
Respondent registered the domain name <minecraftshop.net> on May 23, 2015.
The domain name is confusingly similar to Complainant’s MINECRAFT mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the MINECRAFT mark for any reason.
The domain name resolves to a website that prominently displays Complainant’s MINECRAFT mark and related logo, and that sells counterfeit products for Respondent’s commercial gain.
This use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the MINECRAFT mark when it registered the domain name.
Respondent’s registration and use of the domain name is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the MINECRAFT trademark and service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum February 1, 2005) (finding that a UDRP complainant had rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through its registration with the USPTO).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <minecraftshop.net> domain name is confusingly similar to Complainant’s MINECRAFT mark. The domain name contains the mark in its entirety, differing only by the addition of the descriptive term “shop,” which describes an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that the addition of both the generic term “shop” and of the gTLD “.com” to a UDRP Complainant’s BEYONCÉ mark in creating the domain name <beyonceshop.com> was insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i)). See also Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum December 22, 2010):
The addition of the gTLD “.net” [to the mark of a UDRP complainant] also has no effect on the Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <minecraftshop.net> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the MINECRAFT mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “MIKE TISDALE,” which does not resemble the domain name. On this record, we conclude that Respondent has failed to show that it has rights to or legitimate interests in the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name, where the relevant WHOIS information identified the registrant of the domain name only as “Fred Wallace”). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had never authorized that respondent to incorporate its NAVISTAR mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that the <minecraftshop.net> domain name resolves to a website displaying images belonging to Complainant, and at which Respondent seeks to profit by offering for sale counterfeit MINECRAFT branded products. This use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain name within the meaning of those provisions. See, for example, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum November 30, 2007) (concluding that the sale of counterfeit products by the use of a domain name that is confusingly similar to the mark of a UDRP complainant is evidence that a respondent is not making a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <minecraftshop.net> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum December 22, 2014):
Respondent uses the domain name to promote [the sale of] counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <minecraftshop.net> domain name, which is confusingly similar to Complainant’s MINECRAFT mark, in the manner set out in the Complaint, is an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See H-D Michigan, LLC v. Ross, FA 1250712 (Forum April 23, 2009) (finding, bad faith registration and use under Policy ¶ 4(b)(iv), where a respondent’s selling of counterfeit products by the use of a domain name that was confusingly similar to a UDRP complainant’s mark created a likelihood of confusion among Internet users as to the likelihood of that complainant’s affiliation with the domain name, thus allowing that respondent to profit from such confusion).
Finally, under this head of the Complaint, it is evident that Respondent knew of Complainant and its rights in the MINECRAFT mark when it registered the <minecraftshop.net> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008):
That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark[,] is sufficient to prove bad faith registration … under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <minecraftshop.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 13, 2017
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