Microsoft Corporation v. Sebastian Blaczbon
Claim Number: FA2001001878513
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Sebastian Blaczbon (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mojang.us>, registered with NameCheap, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 15, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <mojang.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2020 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@mojang.us. Also on January 16, 2020, 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 February 10, 20120, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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
1. Complainant is a worldwide leader in software, services and solutions. Complainant has rights in the MOJANG mark through its registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies around the world (e.g., Reg. No. 5,029,543, registered Aug. 30, 2016).
2. Respondent’s <mojang.us>[i] domain name is identical or confusingly similar to Complainant’s MOJANG mark. Respondent incorporates the MOJANG mark in its entirety adding only the “.us” country-code top-level domain (“ccTLD”).
3. Respondent has no rights or legitimate interests in the <mojang.us> domain name. Respondent is not licensed or authorized to use Complainant’s MOJANG mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the <mojang.us> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant in furtherance of a phishing scheme.
5. Respondent registered and uses the <mojang.us> domain name in bad faith as Respondent attempts to pass off as Complainant. Respondent also engages in a phishing scheme to obtain personal information.
6. Lastly, Respondent had actual knowledge of Complainant’s rights in the MOJANG mark through its fame and notoriety around the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MOJANG mark. Respondent’s domain name is confusingly similar to Complainant’s MOJANG mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mojang.us> domain name and that Respondent registered and uses the domain name in bad faith.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
Complainant has rights in the MOJANG mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the MOJANG mark (e.g., Reg. No. 5,029,543, registered Aug. 30, 2016). Therefore, Complainant has adequately shown rights in the MOJANG mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mojang.us> domain name is identical or confusingly similar to Complainant’s MOJANG mark. Registration of a domain name that contains a mark in its entirety and adds a ccTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Respondent incorporates the MOJANG mark in its entirety adding only the “.us” ccTLD. Therefore, that Respondent’s <mojang.us> domain name is confusingly similar to identical to Complainant’s MOJANG mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <mojang.us> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <mojang.us> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the MOJANG mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <mojang.us> domain name lists the registrant as “Sebastian Blaczbon” and there is no other evidence to suggest that Respondent was authorized to use the MOJANG mark or was commonly known by the <mojang.us> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <mojang.us> domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <mojang.us> domain name in an attempt to pass off as Complainant in furtherance of a phishing scheme. Use of a domain name in an attempt to pass off as a complainant in order to conduct a phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant has provided screenshots of Respondent’s domain name’s resolving webpage that shows the MOJANG mark and a log in page where visitors are prompted to enter their MOJANG account information. Therefore, the Panel holds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used the <mojang.us> domain name in bad faith as Respondent attempts to pass off as Complainant. Use of a domain name incorporating the mark of another to pass off as that party is evidence of bad faith per 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.”). Complainant has provided screenshots or Respondent’s domain name’s resolving webpage that shows the MOJANG mark and a log in page to access a user’s account. Therefore, Respondent registered and used the <mojang.us> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent attempts to use the <mojang.us> domain name in furtherance of a phishing scheme. Such use is evidence of bad faith per Policy ¶ 4(a)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”). Complainant has provided the Panel with a screenshot of Respondent’s resolving webpage where visitors are prompted to enter their MOJANG account information. The Panel agrees that Respondent registered and used the <mojang.us> domain name in bad faith per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MOJANG mark because of its fame and notoriety around the world. Actual knowledge of Complainant’s rights in the MOJANG mark prior to registering the <mojang.us> domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant has provided the Panel with evidence showing the fame and notoriety of the MOJANG mark. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the <mojang.us> domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mojang.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 18, 2020
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