Microsoft Corporation v. Kien Cao Trung
Claim Number: FA1512001653058
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 <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com>, 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 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> 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 ICANN’s Uniform Domain Name 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@freeminecraftgames.com, postmaster@minecraftfreeonlinegame.com, postmaster@minecraftgameforfree.com, postmaster@minecraftgamefree.com. 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 20, 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Microsoft Corporation, has rights in the MINECRAFT mark through acquisition of Mojang AB who developed the MINECRAFT game and who previously owned the MINECRAFT trademark.
2. 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 domain names are all confusingly similar to the MINECRAFT mark as the domains include the whole mark and merely add the generic top-level domain (“gTLD”) “.com,” and the generic terms “free,” “for,” “online,” or “game.”
3. Respondent has no rights or legitimate interests in the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> domain names. The WHOIS information identifies Respondent as Kien Cao Trung who is therefore not commonly known by the disputed domain name. Respondent’s use of the 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 and is using the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> domain names in bad faith. The <minecraftgamefree.com> and <minecraftgameforfree.com> domain names were registered on January 30, 2013. The <minecraftfreeonlinegame.com> and <freeminecraftgames.com> domain names registered on February 2, 2013.
5. If Respondent is offering free downloads of Complainant’s MINECRAFT game, these copies are unauthorized and/or counterfeit and would disrupt Complainant’s business. 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.
6. Finally, given the fame of the MINECRAFT mark it is apparent that Respondent had knowledge of Complainant’s rights at the time Complainant registered the domain names.
B. Respondent[1]
1. Respondent should not have been allowed to create the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com>, and <minecraftgamefree.com> domain names by the registrar if Respondent’s registration was an infringement of Complainant’s mark.
2. Respondent believes it operates a legitimate business, and therefore is making a bona fide offering of services. Respondent only uses the domain names to advertise and Respondent does not choose what advertisements are chosen. Thus, because 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 believes it has not acted in bad faith because it has rights or legitimate interests under Policy ¶ 4(a)(ii). 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 mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com>, and <minecraftgamefree.com> 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 and is being used in bad faith.
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 is not commonly known by the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> domain names. WHOIS information identifies the Respondent as, “Kien Cao Trung,” which is not similar to the domain names. Where the WHOIS information is completely dissimilar to the domain names at issue, it has been held that a respondent is not commonly known by the domain names in dispute. 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). Thus, the Panel concludes that Respondent is not commonly known by the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and minecraftgamefree.com> domain names under Policy ¶ 4(c)(ii).
Complainant next claims that Respondent’s use of the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain names to aggregate different online video games with titles such as, “Mine Blocks 1.23,” “Skincraft,” and “Minecraft Quiz v0.5.” All of the domains also include advertisements that prominently include the words, “Minecraft” “free,” and “Play.” After clicking on one of those advertisements users are redirected to a website which prompts the user to install the “free online version” of MINECRAFT. Fine print at the bottom of one of these pages explains, “By clicking ‘install now’ to install PlayPopGames, you hereby consent to the PlayPopGames Terms of Use and Privacy Policy, and agree to allow the PlayPopGames software to serve you advertisements. All such ads are served to you while you surf the internet and are branded as PlayPopGames ads.” All of the domains link to a website that prompts users to install similar ad software associated with either “JungleGamer,” “PlayPopGames,” or “GameZooks.”
The use of a complainant’s mark to entice internet users to click on third-party commercial advertisements has been found not to be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Accordingly, the Panel finds that Respondent’s use of the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and minecraftgamefree.com> domain names does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant contends that Respondent is profiting from the unauthorized use of Complainant’s MINECRAFT game. Respondent does not deny this contention. Bad faith has been found where a respondent uses a domain name to sell counterfeit goods of a 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). Because the record supports Complainant’s assertion, the Panel finds that the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and minecraftgamefree.com> domain names are being used to sell counterfeit goods of Complainant and that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant next claims that Respondent has demonstrated bad faith by using Complainant’s MINECRAFT mark in connection with sites offering free downloads of Complainant’s game which indicates an attempt to confuse and attract internet users for commercial profit. Respondent’s <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com>, and <minecraftgamefree.com> domains all include the MINECRAFT mark and the resolving commercial websites and associated advertisements repeatedly use Complainant’s stylized mark and characters from Complainant’s game. Bad faith under Policy ¶ 4(b)(iv) has been found where a respondent used a domain that is confusingly similar to a complainant’s mark for the purposes of misleading 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). The 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 determines that Respondent registered the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and minecraftgamefree.com> 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 28, 2016
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