Microsoft Corporation v. Sam Wong / AwwLife
Claim Number: FA1806001793386
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Sam Wong / AwwLife (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minecraftbackpacks.com>, registered with NetEarth One Inc. d/b/a NetEarth.
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.
Charles A. Kuechenmeister, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2018; the Forum received payment on June 22, 2018.
On June 27, 2018, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the Forum that the <minecraftbackpacks.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 July 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 23, 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@minecraftbackpacks.com. Also on July 2, 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 Charles A. Kuechenmeister 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a renowned worldwide leader in computer software, services and solutions. Complainant has rights in the MINECRAFT mark based upon its ownership of the registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,252,394) on December 4, 2012 by the Swedish game publisher Mojang AB. Complainant acquired all of the assets of Mojang in November 2014, including all intellectual property rights to the MINECRAFT mark. Respondent’s <minecraftbackpacks.com> domain name (the “Domain Name”) is confusingly similar to the Complainant’s MINECRAFT mark, as it incorporates the mark verbatim, altering it only by adding the generic term ”backpacks” and the most common generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name, nor has he used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the web site resolving from it contains the header “Minecraft Backpack Store” and depicts copyrighted MINECRAFT imagery and purports to offer MINECRAFT merchandise, some of which has been verified by Complainant to be unauthorized and counterfeit. Further, Respondent is not licensed by Complainant to use the MINECRAFT mark, nor is he an authorized vendor, supplier or distributor of complainant’s goods and services.
Respondent registered and is using the Domain Name in bad faith. At the time he registered the Domain Name, Complainant’s MINECRAFT trademark was already famous and familiar to countless consumers worldwide. It is clear from the content at Respondent’s web site that he was not only familiar with Complainant’s MINECRAFT trademark when he registered the Domain Name, but intentionally adopted a domain name incorporating Complainant’s trademark in order to create an association with Complainant and its MINECRAFT products and services.
Also, by using a domain name that is confusingly similar to Complainant’s famous MINECRAFT trademark for a site that uses copyrighted images related to MINECRAFT and offering products bearing the MINECRAFT trademark and imagery, Respondent creates the false impression of a site and business that originates with or is sponsored by Complainant. Finally, Respondent initially used a privacy shield for its WHOIS information.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed allegations 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), 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 makes the findings set forth below with respect to the Domain Name.
Complainant claims rights in the MINECRAFT mark based upon the registration of that mark with the USPTO on December 4, 2012 (Reg. No. 4,252,394). The Complaint states that Complainant acquired the mark as a result of its acquisition of the Swedish game publisher, Mojang AB, in 2104. The registration certificate submitted as Complaint Exhibit E shows the registrant of the mark as “Notch Development AB,” and the Trademark Assignment Sheet immediately following the certificate documents the assignment of that mark from Notch Development AB to Mojang AB. Based upon the information submitted in Complaint Exhibit B and the allegations in the Complaint, it is clear that Complainant acquired all of the assets of Mojang AB, including the MINECRAFT mark, and now owns that mark. Registration of a mark with the USPTO has long been held to be sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). 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.”).
Respondent’s Domain Name is confusingly similar to the MINECRAFT mark. It incorporates the mark verbatim, altering it only by adding the descriptive or generic term “backpacks” and the generic top-level domain “.com.” These changes are not sufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). 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).).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the MINECRAFT mark, in which Complainant has rights.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the Domain Name, (ii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to impersonate a complainant cannot constitute a bona fide offering of goods and services, and (iii) he is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Name. These allegations are supported by competent evidence. The WHOIS information submitted as Complaint Exhibit A identifies “Sam Wong” as the registrant and AwwLife as the registrant organization. Neither of these names bears any resemblance to the Domain Name. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its MINECRAFT mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, the Domain Name resolves to a web site that reproduces Complainant’s MINECRAFT mark and color schemes, depicts imagery identical or very similar to that on Complainant’s <minecraft.com> web site, and purports to offer MINECRAFT merchandise for sale. Compare, Complaint Exhibit D Official MINECRAFT web site, and Complaint Exhibit F pages from Respondent’s web site. It appears from this that Respondent is using the Domain Name to pass his web site off as being that of Complainant in an effort to sell unauthorized or counterfeit products. Use of a domain name in this manner has been held not to qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
For the reasons set forth above, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis demonstrates that the Domain Name resolves to a web site that effectively impersonates Complainant and its MINECRAFT web site. This conduct fits squarely within the circumstances articulated in Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”).
Further, the MINECRAFT mark has been widely used in commerce since 2011 (See, Complaint Exhibit E) and as of June 2016 over 100 million copies of the MINECRAFT game had been sold worldwide. (See, Complaint Exhibit C). Given its presence in the computer game industry, and the fact that Respondent’s Domain Name so closely mimics and impersonates Complainant’s web site, it is clear that, when he registered the Domain Name in August 2016 (See, Complaint Exhibit A) Respondent had full knowledge of Complainants’ mark when he registered it. Indeed, it is evident that Respondent registered the Domain Name precisely because it does contain Complainant’s mark and would likely attract Internet traffic to his sites. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of 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). Respondent clearly knew of Complainant and its marks when he registered the Domain Name, and this is clear evidence of bad faith registration and use.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minecraftbackpacks.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: July 26, 2018
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