DECISION

 

Microsoft Corporation v. Larry Wall/Zynga Crackers

Claim Number: FA1806001793167

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Larry  Wall / Zynga Crackers (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freeminecraft.us>, registered with NameCheap, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 21, 2018; the Forum received payment on June 21, 2018.

 

On June 22, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <freeminecraft.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified  that Respondent is bound by the NameCheap, Inc. 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 June 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2018 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@freeminecraft.us.  Also on June 28, 2018, 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 July 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 for usTLD 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 usTLD Policy, usTLD 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Microsoft Corporation, is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. In November 2014, Complainant completed its acquisition of the Swedish game publisher, Mojang AB, including all intellectual property rights to the award winning MINECRAFT game and the assignment of rights in the MINECRAFT mark based on its registration of the mark with the United States Patent and Trademark Office (“UPSTO”) (e.g. Reg. No. 4,252,394, registered Dec. 4, 2012). See Compl. Ex. E. Respondent’s <freeminecraft.us> domain name is confusingly similar to Complainant’s MINECRAFT mark as it incorporates the mark in its entirety, adding only the generic and/or descriptive term “free,” followed by the “.us” country-code top-level domain (“ccTLD”).

2.    Respondent has no rights or legitimate interests in the <freeminecraft.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MINECRAFT mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in order to purportedly offer unauthorized goods or services.

3.    Respondent registered and is using the <freeminecraft.us> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name which offers free game codes and unrelated offers/sweepstakes. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the MINECRAFT mark prior to registering the disputed domain name.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <freeminecraft.us> domain name is confusingly similar to Complainant’s MINECRAFT mark.

2.    Respondent does not have any rights or legitimate interests in the <freeminecraft.us> domain name.

3.    Respondent registered or used the <freeminecraft.us> domain name in bad faith.

 

DISCUSSION

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 and 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth 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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the MINECRAFT mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Further, an assignment of rights for a USPTO registered mark is sufficient to establish rights in the mark. See TOP RX, LLC v. Alexander Fisher, FA 1701012 (Forum Dec. 14, 2016) (finding that complainant’s evidence of trademark registration to another entity was insignificant because complainant did not provide evidence of assignment of those rights to itself). Complainant provides a copy of its USPTO registration for the MINECRAFT mark (e.g. Reg. No. 4,252,394, registered Dec. 4, 2012). See Compl. Ex. E. The Panel notes the TESS printout for MINECRAFT mark indicates Complainant as the current owner for the mark. Id. Therefore, the Panel holds that Complainant’s registration of the MINECRAFT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues Respondent’s <freeminecraft.us> domain name is confusingly similar to Complainant’s MINECRAFT mark it incorporates the mark in its entirety, adding only the generic and/or descriptive term “free,” followed by the “.us” ccTLD. Additions to a complainant’s mark such as a generic and/or descriptive term do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Further, the addition of a ccTLD is irrelevant under a Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Therefore, the Panel determines the <freeminecraft.us> domain name is confusingly similar to the MINECRAFT mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <freeminecraft.us> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(iii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <freeminecraft.us> domain name lists the registrant as “Larry Wall/Zynga Crackers,” and no information on the record indicates that Respondent is authorized or licensed to use the MINECRAFT mark. See Compl. Ex. A. The Panel therefore finds that Respondent has not been commonly known by the <freeminecraft.us> domain name under Policy ¶ 4(c)(iii).

 

Complainant further argues Respondent fails to use the <freeminecraft.us> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant contends Respondent uses the disputed domain name to pass off as Complainant in order to purportedly offer unauthorized goods or services. Use of a disputed domain name to pass off as a complainant in order to purportedly offer unauthorized goods or services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides a screenshot of the disputed domain name’s resolving website which depicts copyrighted MINECRAFT imagery and contains an entire “About Minecraft” section at the homepage that discusses the origins of the Minecraft product, its history, how to create a Minecraft account, and how to play the game. See Compl. Ex. F. The site also purports to offer free MINECRAFT codes to allow the user to download the MINECRAFT game for free. Id. Therefore, the Panel agrees that Respondent failed to use the <freeminecraft.us> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) & (iv).

 

Registration or Use in Bad Faith

Complainant alleges Respondent registered and uses the <freeminecraft.us> domain name in bad faith. Specifically, Complainant contends Respondent uses the disputed domain name to attract, for commercial gain, users in order to purportedly give away free game codes and other, unrelated offers/sweepstakes. Use of a disputed domain name to pass off and offer unrelated goods or services may demonstrate bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant provides a screenshot of the disputed domain name’s resolving website which depicts copyrighted MINECRAFT imagery and contains an entire “About Minecraft” section at the homepage that discusses the origins of the MINECRAFT product, its history, how to create a MINECRAFT account, and how to play the game. See Compl. Ex. F. The site also purports to offer free MINECRAFT codes to allow the user to download the MINECRAFT game for free. Id. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s MINECRAFT mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the MINECRAFT due to fame and Respondent’s use of the mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <freeminecraft.us> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  August 2, 2018