DECISION

 

Microsoft Corporation v. Edward Schmidt

Claim Number: FA1711001757901

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Edward Schmidt (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <minecraftgifts.net>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 November 9, 2017; the Forum received payment on November 9, 2017.

 

On November 9, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <minecraftgifts.net> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@minecraftgifts.net.  Also on November 14, 2017, 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 December 6, 2017, 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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a worldwide leader in software, services and solutions. Complainant’s subsidiary company, Mojang AB, created and produced the widely known “Minecraft” game, which has sold over 60 million copies as of October 2014. See Compl. Ex. B. Complainant registered the MINECRAFT mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 4,252,394, registered Dec. 4, 2012) and numerous trademark offices around the world. See Compl. Ex. D. Respondent’s <minecraftgifts.net> domain name is confusingly similar to Complainant’s MINECRAFT mark because it incorporates the mark in its entirety, adds the generic term “gifts,” and attaches a “.net” generic top level domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <minecraftgifts.net> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent’s use of the MINECRAFT mark. WHOIS records indicate that the registrant for the <minecraftgifts.net> domain name is “Edward Schmidt.” See Compl. Ex. A. Furthermore, Respondent’s <minecraftgifts.net> domain name does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use as instead, the resolving website for the disputed domain name prominently displays Complainant’s MINECRAFT mark and purports to offer free premium MINECRAFT accounts to users who enter their account information, after which users are redirected to a website that requires the user to complete a survey. See Compl. Ex. E.

3.    Respondent registered and used its <minecraftgifts.net> domain name in bad faith. Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Respondent’s <minecraftgifts.net> domain name also attempts to obtain users’ personal information through a phishing scheme by requiring users to submit their Minecraft log-in and email credentials. See Compl. Ex. E. Furthermore, Respondent had actual and constructive notice of Complainant’s MINECRAFT mark due to the fame and extensive trademark registrations of the mark.

 

B.   Respondent

1.    Respondent did not submit a response.

 

FINDINGS

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

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

3.    Respondent registered or used the <minecraftgifts.net> 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.

 

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 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 to hold trademark registrations for the MINECRAFT mark with the USPTO (e.g., Reg. No. 4,252,394, registered Dec. 4, 2012) and numerous government trademark offices. See Compl. Ex. D. The general consensus among panels is that USPTO registrations are sufficient to show rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel  therefore finds Complainant has rights to the MINECRAFT mark per Policy ¶ 4(a)(i).

 

Next, Complainant contends that Respondent’s <minecraftgifts.net> domain name is confusingly similar to Complainant’s MINECRAFT mark. The addition of generic or descriptive terms and a gTLD fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Complainant asserts Respondent’s <minecraftgifts.net> domain name adds the generic term “gifts” and attaches a “.net” gTLD to Complainant’s MINECRAFT mark. Therefore, the Panel finds that Respondent’s <minecraftgifts.net> domain name is confusingly similar to Complainant’s MINECRAFT mark pursuant to 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <minecraftgifts.net> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MINECRAFT mark. Where a response is lacking, WHOIS information can support a finding that Respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, Respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Edward Schmidt.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <minecraftgifts.net> domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant asserts Respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues Respondent’s <minecraftgifts.net> domain name is confusingly similar to Complainant’s MINECRAFT mark and users are required to enter personal information, presumably as part of a phishing scheme. Generally, attempts to pass off and then obtain personal information through phishing cannot amount to rights or legitimate interests in the disputed domain name. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant asserts Respondent’s <minecraftgifts.net> domain name hosts a resolving webpage that is visually identical to Complainant’s own website. See Compl. Ex. C & E. Complainant further claims Respondent’s site requires users to enter their Twitter username, email address, and their “Minecraft profile name” in order to obtain a “Free Premium Account,” after which users are then redirected to a survey that is part of the verification process and asks that users install two free apps in order to get their free premium account. See Compl. Ex. E. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and used the <minecraftgifts.net> domain name to pass off as Complainant for Respondent’s commercial gain. Attempts to pass off as a complainant to attract users for commercial gain evince a finding of bad faith registration and use per Policy ¶ 4(b)(iv). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004)

(“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients.  Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant contends Respondent’s <minecraftgifts.net> domain name closely resembles Complainant’s site and purports to offer users a free premium Minecraft account if users submit their Twitter, email, and Minecraft account information. See Compl. Ex. E. The Panel therefore finds Respondent registered and used the <minecraftgifts.net> domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant contends Respondent operates a phishing scheme with the disputed domain name. Use of a disputed domain name in connection with a phishing scheme is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant argues Respondent’s <minecraftgifts.net> domain name is used in connection with a resolving website that is visually identical to Complainant’s website to operate a phishing scheme with the purpose of obtaining the personal information of users who believe the webpage is operated by Complainant. See Compl. Ex. E. The Panel agrees with Complainant and find Respondent registered and used the disputed domain name in bad faith.

 

Finally, Complainant contends that in light of the fame and notoriety of Complainant's MINECRAFT mark, it is inconceivable that Respondent could have registered the <minecraftgifts.net> domain name without actual and constructive knowledge of Complainant's rights in the mark. This Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel instead agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant asserts Respondent utilizes the MINECRAFT mark in the domain name and that the resolving website is visually identical to Complainant’s own website. See Compl. Ex. E. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s MINECRAFT mark—bad faith per Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

John J. Upchurch, Panelist

Dated:  December 18, 2017