Microsoft Corporation v. yuzhi shen
Claim Number: FA1808001802566
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is yuzhi shen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minecraftapkmod.com>, registered with Name.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2018; the Forum received payment on August 21, 2018.
On August 22, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <minecraftapkmod.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 August 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@minecraftapkmod.com. Also on August 28, 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 20, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Microsoft Corporation, is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant owns all intellectual property rights of the MINECRAFT mark.
Complainant has rights in the mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <minecraftapkmod.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates Complainant’s entire mark in the domain name plus the descriptive term “apk mod” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <minecraftapkmod.com> domain name because Respondent is not commonly known by the domain name and is not authorized by Complainant to use the MINECRAFT mark in any fashion. Additionally, Respondent used a privacy shield to hide its identity when registering the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent attempts to pass itself off as Complainant and offers unauthorized downloads and services at the website associated with the at-issue domain name.
Respondent registered and uses the <minecraftapkmod.com> domain name in bad faith. Respondent attempts to commercially benefit from the domain name by redirecting internet users to unrelated sites and offering unauthorized downloads of the Minecraft game. Furthermore, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the at-issue domain name. Finally, Respondent used a privacy shield when registering the disputed domain name in an attempt to shield its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in MINECRAFT as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the MINECRAFT mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent used the <minecraftapkmod.com> domain name to address a website designed to look as if sponsored by Complainant so that it may pass itself off as Complainant and offer links to third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for MINECRAFT demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
In forming the at-issue domain name Respondent adds the descriptive term “apk” and “mod” (or “apk mod”) to Complainant’s MINECRAFT trademark, and then appends the top-level domain name “.com” to the resulting string. However, the differences between the <minecraftapkmod.com> domain name and Complainant’s MINECRAFT trademark are insufficient to distinguish Respondent’s domain name from Complainant’s trademark for the purposes of the Policy. In fact, the domain name’s inclusion of the suggestive terms “apk” and “mod,” which relate to the software based MINECRAFT game, only serve to add to any confusion between Complainant’s mark and the domain name. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <minecraftapkmod.com> domain name is confusingly similar to Complainant’s MINECRAFT trademark. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for Respondent’s <minecraftapkmod.com> domain name identifies its registrant as “yuzhi shen.” The record contains no evidence that otherwise tends to prove that Respondent is commonly known by the <minecraftapkmod.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the at-issue domain name to attempt to pass itself off as Complainant. It does so by misappropriating Complainant’s trademark and other intellectual property for use as part of Respondent’s domain name and its related website. On the website, Respondent offers links to unauthorized Minecraft download facilities and other third party websites. Respondent’s use of the <minecraftapkmod.com> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <minecraftapkmod.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances, as well as other circumstance, are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and legitimate interests, Respondent uses the confusingly similar domain to pass itself off as Complainant by addressing a website displaying Complainant’s intellectual property. The website directs visitors to unauthorized Minecraft downloads and other third party websites. Such use of the <minecraftapkmod.com> domain name indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also, Microsoft Corp. v. Lafont, FA 1349611 (Forum Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”).
Additionally, Respondent registered <minecraftapkmod.com> knowing that Complainant had trademark rights in the MINECRAFT trademark. Respondent’s prior knowledge is evident given the notoriety of Complainant’s trademark as well as Respondent’s use of the domain name to address a website designed to look like a website designed to look like a website sponsored by Complainant. It follows that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <minecraftapkmod.com> domain name in bad faith pursuant to 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, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "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 <minecraftapkmod.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 23, 2018
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