Microsoft Corporation v. Thong Tran Thanh
Claim Number: FA1512001653187
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Thong Tran Thanh (“Respondent”), VIET NAM.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minecraft4free.us> and <minecraftforfreeonline.us>, registered with GoDaddy.com, LLC.
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 December 18, 2015; the Forum received payment on December 18, 2015.
On December 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <minecraft4free.us> and <minecraftforfreeonline.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@minecraft4free.us, postmaster@minecraftforfreeonline.us. Also on December 22, 2015, 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.
A timely Response was received and determined to be complete on January 11, 2016.
On January 19, 2016, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant asserts rights in the MINECRAFT trademark via its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,252,394, registered filed Dec. 4, 2012). The mark is used in connection with the promotion and sale of an online video game. The <minecraft4free.us> domain name contains the entire mark and differs only by the addition of the generic or descriptive word “free,” as well as the country code top-level domain (“ccTLD”) “.us.” The <minecraftforfreeonline.us> domain name likewise contains the entire mark, differing only by the addition of a different generic or descriptive term (“for free online”), and the ccTLD “.us.”
Respondent has no rights or legitimate interests in respect of the domain names. Respondent is not in possession of a trademark identical to Complainant’s MINECRAFT mark. Respondent is not commonly known as either of the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use of the domain names because they resolve to a page that diverts Internet users to competing services and/or offers counterfeit services.
Respondent has engaged in bad faith registration and use. By displaying the MINECRAFT mark on the resolving webpage and offering Internet users the opportunity to receive a counterfeit version of Complainant’s services, Respondent is disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii) and attempting to profit from a likelihood of confusion, which is bad faith under Policy ¶ 4(b)(iv). Also, due to the fame and notoriety Complainant’s mark has gained in the online video game market, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights at the time of registration.
B. Respondent
Respondent contends as follows:
Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
Respondent believes it operates a legitimate business, and therefore is making a bona fide offering of services.
Respondent believes it has not acted in bad faith because it has rights or legitimate interests under Policy ¶ 4(a)(ii).
Complainant has rights in the MINECRAFT mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to a webpage that diverts Internet users to competing services and offers counterfeit services.
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.
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.
The at-issue domain names are confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MINECRAFT mark in the United States and other countries including Vietnam, where Respondent resides, demonstrates Complainant’s right in a mark for the purpose of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <minecraft4free.us> domain name contains Complainant’s entire trademark and differs only by the addition of the generic or descriptive word “free,” and the ccTLD “.us.” Likewise the <minecraftforfreeonline.us> domain name contains the entire MINECRAFT trademark, differing only by the addition of a similar generic or descriptive term (“for free online”), and the ccTLD “.us.” As a general rule, a top-level domain name such as “.us” is incapable of distinguishing a domain name from a trademark at issue. See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). Furthermore, where as here a disputed domain names contains Complainant’s entire trademark and differs only by the addition of a generic or descriptive phrase and top-level domain name, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Therefore, the Panel finds that the <minecraft4free.us> and <minecraftforfreeonline.us> domain names are each confusingly similar to Complainant’s MINECRAFT trademark.
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 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. 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 either at-issue domain name.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Thong Tran Thanh.” Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services and there is nothing in the record which tends to otherwise show that Respondent may be known by either at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by either of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore the webpages that are addressed by the disputed domain names display the banners “Minecraft 4 Free” and “Minecraft For Free Online” and advertise games unrelated to Complainant. The webpages also offer to allow a free download of Complainant’s Minecraft game. When navigating to download Minecraft Internet users are deceived into believing they are downloading a free version of Complainant’s game, only to be taken to another webpage that displays various unrelated games. To the extent that Internet users do in fact end up downloading a free version of Complainant’s game, it amounts to Respondent’s offering counterfeit services. Moreover, Respondent is presumably receiving pay-per-click fees for some or all of the links appearing on the subject webpages. The use of a confusingly similar domain name to advertise competing services, profit from pay-per-click links, divert Internet users to competing services, or to offer counterfeit goods or services is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also, Microsoft Corporation v. Daina Trading, FA 1533432 (Nat. Arb. Forum, Jan. 2. 2014)(finding the use of the famous XBOX trademark to attract consumers to Respondent’s commercial website which also promoted products of others was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also, Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Given the forgoing, Complainant satisfies its initial burden and 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 has not persuaded the Panel of any rights or legitimate interests.
The domain names were each registered and used in bad faith. As discussed below, 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 pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding Policy ¶ 4(a)(ii), the domain names were being used to offer counterfeit services. Using the domain names for such purposes is disruptive to Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). Further, by attempting to commercially profit from the confusingly similar domain names and from the additional confusion caused by the material displayed on the addressed webpages Respondent demonstrates bad faith pursuant to Policy ¶ 4(b)(iv) bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Finally, Respondent registered the <minecraft4free.us> and <minecraftforfreeonline.us> domain names with actual knowledge of Complainant’s MINECRAFT trademark. Respondent’s knowledge of Complainant’s MINECRAFT mark is inferred from the notoriety of the mark, as well as from Respondent’s scheme to improperly exploit the mark as discussed above. Under the circumstances, it is inconceivable that Respondent was unaware of Complainant’s mark when it registered each of the at-issue domain names. Respondent’s actual knowledge of Complainant’s rights in the MINECRAFT mark prior to registering the at-issue domain names further urges that Respondent registered such domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. 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"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minecraft4free.us> and <minecraftforfreeonline.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 21, 2016
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