Microsoft Corporation v. Cezary Misiag
Claim Number: FA1812001821563
Complainant is Microsoft Corporation ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Cezary Misiag ("Respondent"), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minecraftfree.club>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2018; the Forum received payment on December 17, 2018.
On December 17, 2018, NameCheap, Inc. confirmed by email to the Forum that the <minecraftfree.club> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@minecraftfree.club. Also on December 18, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 January 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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, through a subsidiary, owns intellectual property rights in the popular video game MINECRAFT, which was initially released in 2009, and which Complainant states is the third best-selling video game of all time. The MINECRAFT mark is registered in the United States and many other jurisdictions.
Respondent registered the disputed domain name <minecraftfree.club> in December 2018. The domain name is being used for a website that prominently displays the MINECRAFT mark and associated imagery, and purports to offer downloads of the MINECRAFT software. When a user attempts to download the software, however, the site requires the user to enter an email address. Complainant accuses Respondent of using the domain name to phish for users' personal information. Complainant states that Respondent is not affiliated with Complainant in any way and is not licensed to use Complainant's MINECRAFT mark.
Complainant contends on the above grounds that the disputed domain name <minecraftfree.club> is confusingly similar to its MINECRAFT mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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 Management, 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 disputed domain name <minecraftfree.club> incorporates Complainant's registered MINECRAFT trademark, adding the generic term "free" and the ".club" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Microsoft Corp. v. Kien Cao Trung, FA 1653058 (Forum Jan. 28, 2016) (finding <freeminecraftgames.com>, <minecraftfreeonlinegame.com>, <minecraftgameforfree.com> and <minecraftgamefree.com> confusingly similar to MINECRAFT); Microsoft Corp. v. Juan Cleber de Toledo, FA 1800719 (Forum Sept. 11, 2018) (finding <minecraftfacil.com> confusingly similar to MINECRAFT); Big Fish Games, Inc. v. Stepan Bandera, FA 1804649 (Forum Oct. 3, 2018) (finding <bigfishgames.club> identical or confusingly similar to BIG FISH and BIG FISH GAMES). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that displays the mark and associated imagery in a misleading manner and the only apparent purpose of which is to deceive Internet users into providing personal information. Such use is not likely to give rise to rights or legitimate interests. See, e.g., Microsoft Corp. v. Juan Cleber de Toledo, supra (finding lack of rights or interests under similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using a domain name that incorporates Complainant's well-known mark for a misleading website that purports to offer Complainant's software and solicits personal information from users. Such use is indicative of bad faith registration and use under the Policy. See, e.g., Microsoft Corp. v. Juan Cleber de Toledo, supra (finding bad faith registration and use under similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minecraftfree.club> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 14, 2019
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