Microsoft Corporation v. Juan Cleber de Toledo
Claim Number: FA1808001800719
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Juan Cleber de Toledo (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com>, registered with Hostinger, UAB.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2018; the Forum received payment on August 9, 2018.
On August 10, 2018, Hostinger, UAB confirmed by e-mail to the Forum that the <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com> domain names are registered with Hostinger, UAB and that Respondent is the current registrant of the names. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 August 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@minecraftfacil.com, postmaster@ganheminecraft.com, and postmaster@minemvp.com. Also on August 16, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant also uses the MINECRAFT mark in connection with a video game released in May of 2009. Complainant has rights in the MINECRAFT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,252,394, registered Dec. 4, 2012). See Compl. Ex. E. Respondent’s <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com> domain names are confusingly similar to Complainant’s MINECRAFT mark as Respondent merely adds the terms “facile,” “ganhe,” or “mvp” (“facile” and “ganhe” are Portuguese for “free” and “win” respectively, “mvp” is an acronym for “most valuable player”), and a “.com” generic top-level domain (“gTLD”) to the fully incorporated mark.
Respondent has no rights or legitimate interests in the <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com> domain names. Respondent is not authorized or licensed to use Complainant’s MINECRAFT mark and is not commonly known by the disputed domain names, as the WHOIS information lists the registrant as “Juan Cleber de Toledo.” See Compl. Ex. A. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant and purports to offer unauthorized Microsoft accounts. See Compl. Exs. F–H. Further, Respondent attempts to collect users’ personal information as part of a phishing scheme.
Respondent registered and uses the <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain names where Respondent offers Complainant’s unauthorized products and services. See Compl. Exs. F–H. Furthermore, Respondent had actual knowledge of Complainant’s rights in the MINECRAFT mark prior to registering the disputed domain names, as evidenced by the worldwide fame and notoriety associated with the MINECRAFT mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com> domain names were registered on February 28, 2018; February 10, 2018; and January 11, 2018, respectively.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 the disputed domain names are confusingly similar with Complainant’s trademark. Complainant has adequately plead it rights and interests in and to this trademark. Respondent merely adds the terms “facile,” “ganhe,” or “mvp” (“facile” and “ganhe” are Portuguese for “free” and “win” respectively, “mvp” is an acronym for “most valuable player”), and a “.com” generic top-level domain (“gTLD”) to the fully incorporated mark. This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
The disputed domain name <minemvp.com> does not encapsulate the entire mark as the other two disputed domain names do. However, “mine” is clearly the dominant portion of the mark and, given the totality of the circumstances, it is clear that Respondent intended a reference to the MINECRAFT mark. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD). Therefore, even though the disputed domain name <minemvp.com> does not include the entire mark MINECRAFT, the Panel still finds it confusingly similar to Complainant’s trademark.
As such, the Panel finds the disputed domain names to be confusingly similar with Complainant’s trademark.
The Panel also finds that Respondent lacks any rights or legitimate interests in or to these disputed domain names. Respondent has no right, permission or license to register the disputed domain names. Respondent is not commonly known by the disputed domain names.
Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant and purports to offer unauthorized Microsoft accounts. See Compl. Exs. F–H. Further, Respondent attempts to collect users’ personal information as part of a phishing scheme.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant argues that Respondent attempts to attract, for commercial gain, users to the disputed domain names where Respondent attempts to pass itself off as Complainant and offer Complainant’s unauthorized products and services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See 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.”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant provides screenshots of the resolving webpages associated with the domain names, all of which appear to contain references to Complainant’s mark, with images, logos, and videos. See Compl. Exs. F–H. Complainant points to the portion of the website where users can enter personal and financial information as the method of Respondent’s commercial gain. Id. Accordingly, the Panel finds that Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the MINECRAFT mark at the time of registering the disputed domain names. Given the fame of the mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights and interests in and to the trademark MINECRAFT at the time it registered the disputed domain names.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <minecraftfacil.com>, <ganheminecraft.com>, and <minemvp.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: September 11, 2018
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