Microsoft Corporation v. Larry Wall / Zynga Crackers
Claim Number: FA1806001792973
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 NAMES
The domain names at issue are <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com>, registered with Namecheap, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2018; the Forum received payment on June 21, 2018.
On June 21, 2018; Jun 22, 2018, Namecheap, Inc. confirmed by e-mail to the Forum that the <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names are registered with Namecheap, Inc. and that Respondent is the current registrant of the names. 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 June 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@minecraftupgrade.com, postmaster@freeminecraftcodes.net, postmaster@minecraftgeek.com, postmaster@xboxlivegeek.com, postmaster@xboxliveupgrade.com. Also on June 22, 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 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names are confusingly similar to Complainant’s MINECRAFT mark.
2. Respondent does not have any rights or legitimate interests in the <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names.
3. Respondent registered and uses the <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Microsoft Corporation holds registrations for its MINECRAFT (Reg. No. 4,252,394, registered Dec. 4, 2012) and XBOX LIVE (Reg. No. 2,902,268, registered Nov. 9, 2004) marks with the United States Patent and Trademark Office (“USPTO”), used in connection with offering games and related services.
Respondent registered the disputed domain names on the following dates: <minecraftupgrade.com> (May 17, 2016), <freeminecraftcodes.net> (October 13, 2014), <minecraftgeek.com> (May 6, 2014), <xboxlivegeek.com> (May 6, 2014), and <xboxliveupgrade.com> (May 17, 2016), and uses them to pass off as Complainant and to offer free codes and then link Internet users to unrelated products.
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 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.”).
The Panel finds that Complainant has established rights in the MINECRAFT and XBOX LIVE marks for the purposes of Policy ¶ 4(a)(i) through registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names incorporate one of Complainant’s marks and merely add a generic/descriptive term along with a gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name from a mark for purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s MINECRAFT or XBOX LIVE marks.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent has no rights or legitimate interests in the <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names, and is not commonly known by the domain names. Complainant states that Respondent is not legitimately affiliated with Complainant, and has no permission to use the MINECRAFT or XBOX LIVE marks. The WHOIS identifies “Larry Wall / Zynga Crackers” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant argues that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass off as Complainant while offering unrelated products/services. Passing off to promote unrelated goods/services can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Complainant provides screenshots of the resolving webpages for the disputed domain names, all of which feature Complainant’s marks and images, and links to third-party websites. The Panel therefore finds that Respondent has failed to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent registered and uses the <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain name in bad faith by attempting to commercially benefit from the goodwill associated with Complainant’s MINECRAFT and XBOX LIVE marks, by using them to offer free game codes and various unrelated goods and services. The Panel agrees and finds that Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the MINECRAFT and XBOX LIVE marks at the time of registering the disputed domain names. The Panel agrees, noting the fame of Complainant’s MINECRAFT and XBOXLIVE marks, and finds that Respondent had actual knowledge of Complainant’s marks when it registered the disputed domain names, demonstrating 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); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”).
The Panel finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minecraftupgrade.com>, <freeminecraftcodes.net>, <minecraftgeek.com>, <xboxlivegeek.com>, and <xboxliveupgrade.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 16, 2018
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