Microsoft Corporation v. Alm Blablas
Claim Number: FA1909001860907
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Alm Blablas (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getmcearth.com>, registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 5, 2019; the Forum received payment on September 5, 2019.
On September 6, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <getmcearth.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 September 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2019 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@getmcearth.com. Also on September 9, 2019, 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 October 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s is the owner of the mark MINECRAFT through a wholly owned subsidiary Mojang, The MINECRAFT mark is registered, inter alia, in the USA for computer games and was first used in 2009. The official web site where the game can be purchased is Minecraft.net. In May of 2019 Complainant announced it would be releasing a new game called MINECRAFT EARTH and around the time that the Domain Name was registered the MINECRAFT EARTH game was released in closed beta.
The term MC has been widely used by gamers to refer to MINECRAFT. The pocket edition of MINECRAFT was called MCPE. Various servers for the MINECRAFT game also use MC. The Complainant has common law rights in MC mark.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s MC mark, adding only the generic term ‘earth’ which refers to the Complainant’s game name and the gTLD .com which is not sufficient to distinguish the Domain Name from the Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and is not authorized by the Complainant. The Domain Name is being used for a site that replicates the official MINECRAFT site copying graphics and text, using the official game trailer video and uses the Mojang and Microsoft names. Passing a site off as connected with the Complainant by imitating the Complainant’s official site has been found to establish a lack of rights or legitimate interests. However, unlike the official site the site attached to the Domain Name includes a download button that takes the users to various third party offerings. This is not a bona fide offering of goods or a legitimate noncommercial or fair use. Any ‘Minecraft’ game offered is not authorized and would be counterfeit.
The Respondent’s activities are registration and use in bad faith. It is clear from the content at the Domain Name that the Respondent knew about the Complainant and its rights and intentionally adopted the MC mark in the Domain Name and content from the Complainant’s site to create an association with the Complainant and its products and pass itself off as the Complainant. Internet users are being confused and diverted for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of common law rights in the mark MC an abbreviation of MINECRAFT.
The Domain Name registered in 2019 has been used for a site mimicking the official MINECRAFT site of the Complainant, copying material from that site and using the name of the Complainant and its subsidiary.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant provided evidence of its use of the MC mark to refer to the Complainant’s computer game ‘Minecraft’ and the Panel finds that Complainant has common law rights in the MC mark which has achieved secondary meaning through use and is also used by users as a mark to refer to the Complainant’s game. Further the panel finds on the balance of probability that the Respondent would not have chosen the designation MC unless it would be recognized as a mark referring to the Complainant’s computer game.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘earth’ to the Complainant's MC mark does not prevent confusing similarity between the Domain Name and the Complainant's MC trademark which is still recognizable in the Domain Name.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s MC mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its MC mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The site is commercial so cannot be noncommercial legitimate fair use.
The web site attached to the Domain Name mimics the Complainant’s authorized site using material from that site and the Complainant’s and its subsidiary’s name so that the Respondent’s site appeared to be an official site connected with the Complainant. It does not make it clear that there is no connection with the Complainant. The Panel finds this use is deceptive and passing off. As such, it cannot amount to the bona fide offering of goods and services. See iFinex Inc. v. Yuri Heifetz/Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s web site in order to cause existing or potential customers of the Complainant’s to believe they are dealing with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name).
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist, the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant when it is not. The Respondent’s site mimics the Complainant’s web site using text and graphics from the latter and the Complainant and its subsidiary’s name showing that the Respondent is aware of the Complainant and its rights. The site appears to offer unauthorized versions of the Complainant’s game. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of that web site or services on it likely to disrupt the business of the Complainant. 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 used the domain name in bad faith by directing Internet users to a website that mimicked Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iv) and 4 (b)(iii), There is no need to consider addition allegations of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <getmcearth.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 1, 2019
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