BODIS

#Microsoft lost #UDRP for #Minecraft bedroom #domain name

The almighty Microsoft, owners of the Minecraft brand, lost the UDRP it filed against the domain name Minecraftbedroom.com.

The domain name resolves to a web site giving advice on how to create a bedroom with a Minecraft theme. The Minecraft game was acquired by Microsoft in 2014, for $2.5 billion dollars.

In his defense, the Respondent said that this is a fan site providing honest information on how to decorate a bedroom, mostly for kids, if you are a fan of the game.

Daniel B. Banks, Jr., Panelist at the National Arbitration Forum, delivered a decision favoring the Respondent, and allowed for the domain MinecraftBedroom.com to remain with them.

Full details of this decision follow:

Microsoft Corporation v. Daniel Jackson / Profit King

Claim Number: FA1803001777857

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Daniel Jackson / Profit King (“Respondent”), Great Britain.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <minecraftbedroom.com>, registered with NameCheap, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Daniel B. Banks, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 20, 2018; the Forum received payment on March 20, 2018.

On March 20, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <minecraftbedroom.com> 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 March 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@minecraftbedroom.com. Also on March 22, 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.

A timely Response was received and determined to be complete on April 10, 2018.

An additional submission was timely filed by Complainant on April 13, 2018.

On April 11, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. MINECRAFT, owned by Complainant, is a video game that was initially released in May of 2009 and widely released in November of 2011. Complainant has rights in the MINECRAFT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,252,394, registered Dec. 4, 2012). Respondent’s <minecraftbedroom.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s MINECRAFT mark in its entirety, adding only the generic or descriptive term “bedroom” and the generic top-level domain (“gTLD”) “.com.”

Respondent has no rights or legitimate interests in the <minecraftbedroom.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS registration information lists Respondent as “Daniel Jackson/Profit King.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name directs users to a site that depicts copyrighted MINECRAFT imagery and contains links to various third party websites that purport to offer MINECRAFT merchandise, some of which appear to be counterfeit.

Respondent registered and uses the <minecraftbedroom.com> domain name in bad faith. Respondent intentionally registered a domain name incorporating Complainant’s mark in order to create an association with Complainant and its MINECRAFT products and services, which causes confusion among Internet users. Respondent creates this confusion to use copyrighted images related to Complainant’s MINECRAFT mark and offer links to sites purporting to sell Complainant’s products, whether legitimate or counterfeit, presumably for Respondent’s commercial gain. Finally, based on the content appearing on Respondent’s webpage, Respondent clearly had knowledge of Complainant’s MINECRAFT mark at the time it registered the at-issue domain name.

B. Respondent

Respondent makes no contentions pertaining to Policy ¶ 4(a)(i).

Respondent has rights and legitimate interests in the <minecraftbedroom.com> domain name, and makes a legitimate noncommercial or fair use of the domain name. Respondent uses the domain name to host a fan site, where it provides information and ideas to create a MINECRAFT themed bedroom. Respondent makes no mention that it is affiliated or endorsed by Complainant; rather, Respondent prominently displays a welcome message which indicates otherwise. Further, while the domain name does contain links, those links all redirect users to third-parties who legitimately sell Complainant’s products. Respondent does not sell Complainant’s products, nor does Respondent commercially benefit from any use of the domain name.

Respondent did not register or use the <minecraftbedroom.com> domain name in bad faith. Respondent did not register the domain name to disrupt Complainant’s business or create confusion in prospective users. Rather, Respondent uses the domain name to host a fan site, where it provides information and ideas to create a MINECRAFT themed bedroom. Additionally, the links on the resolving domain name all redirect users to third-parties who legitimately sell Complainant’s products, and Respondent does not derive any money from the use of the domain name in any way.

C. Additional Submissions

Complainant

Respondent argues that he has rights or legitimate interests in the disputed domain name because the site is a “fan site” that provides information and links to third party websites that sell products for parents interested in MINECRAFT merchandise.

In his Response, Respondent states as follows:

“On visiting the Minecraft.net website there is still a distinct lack of Minecraft bedroom themed products of which one could obtain to create a Minecraft themed bedroom, and there is also no advice on how to obtain the products or on how to go about creating a Minecraft themed bedroom. Therefore, my fan-site is still delivering a service which Minecraft.net does not, the service of delivering advice and guidance to families who would like to create a Minecraft themed bedroom.”

The fact that Complainant does not provide the same service that Respondent allegedly provides is irrelevant to this proceeding. Respondent’s registration and use of <minecraftbedroom.com> to link to sites unrelated to Microsoft which markets and sell competing goods, and in some cases, counterfeit goods, is disruptive to Complainant’s business.

As noted in the Complaint, using a mark to lure consumers to a site that sells counterfeit products clearly violates the Policy. Respondent’s use of Complainant’s marks with depictions of what appear to be genuine MINECRAFT products is designed to make consumers comfortable that the goods that they are ordering are genuine MINECRAFT products when in fact, it appears that they are counterfeit.

Respondent does not dispute the fact that he had knowledge of Microsoft’s prior rights in the MINECRAFT trademark and acknowledges that the site has links to third party products not associated with Microsoft. Despite Respondent’s claims that this is a free service, the fact that the site links to these third party sites where Respondent presumably benefits commercially, a fact that is not denied, is sufficient to find bad faith. As the panel found in Baylor University v. Mike Pocsik, FA 1456685 (Forum, Sept. 7, 2012):

“As discussed above, the Panel notes that Respondent’s disputed domain name resolves to a parking page through the Registrar that features various third-party links. The Panel finds that Respondent is using the disputed domain name in order to create confusion as to Complainant’s affiliation with the resolving website for commercial gain, and that bad faith registration and use exists under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the< bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).”

Based upon Respondent’s actual knowledge of Complainant’s rights to the MINECRAFT trademark prior to the registration of the disputed domain name and the fact that the site contains copyrighted images belonging to Complainant and links to third party sites where some counterfeit products are sold, Respondent’s bad faith is clear.

FINDINGS

1 – The disputed domain name is identical and/or confusingly similar to a trademark or service mark in which Complainant has rights.

2 – Respondent has rights or legitimate interests in respect of the disputed domain name.

3 – The disputed domain name was not registered and is not being used in bad faith.

DISCUSSION

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.

Identical and/or Confusingly Similar

It is noted that the Respondent does not dispute this element of the Policy.

Complainant claims rights in the MINECRAFT mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,252,394, registered Dec. 4, 2012). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . “. Due to Complainant’s USPTO registration the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MINECRAFT mark for the purposes of Policy ¶ 4(a)(i).

Complainant next argues that Respondent’s <minecraftbedroom.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s MINECRAFT mark in its entirety, adding only the generic or descriptive term “bedroom” and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, 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 also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the <minecraftbedroom.com> domain name is confusingly similar to the MINECRAFT mark under Policy ¶4(a)(i).

Rights or Legitimate Interests

Complainant has established that Respondent has never been legitimately affiliated with Complainant, has never been known been known by the domain name and has not been given permission to use the mark in any manner. However, Rule 4 (c) of the Policy requires the panel to evaluate all of the evidence presented. After such evaluation, the Panel finds, under Policy 4(c)(i) that the Respondent, before any notice of the dispute, used the domain name in connection with a bona fide offering of services. See JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

It appears to this panel that Respondent has rights and legitimate interests in the <minecraftbedroom.com> domain name, as it uses the domain name to host a noncommercial fan site to provide information and ideas to create a MINECRAFT themed bedroom. Specifically, the evidence indicates that Respondent created the website to provide fans of Minecraft with an easier way to locate products to use in decorating bedrooms for their children. And, the evidence indicates that this was a free service. Using a confusingly similar domain name to host a fan website while not deriving any monetary gain may confer rights and legitimate interests in a domain name. See Ms. Stefani Germanotta v oranges arecool XD, FA 1403808 (Forum Sept. 21, 2011) (“The Panel… finds that Respondent’s use of the disputed domain name in conjunction with a fan website is 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 RMO, Inc. v. Burbridge, FA 96949 (Forum May 16, 2001) (“The use of domain names for non-commercial purposes is a recognized method of proving rights and legitimate interests on the part of such user even when the use may cause some disadvantage or harm to other parties.”) The Panel considers a screenshot of the website, which explains Respondent’s creation and use of the domain name as a fan website. According to this explanation, Respondent and his son are fans of Minecraft and established the site to make it easier for other fans to locate Minecraft themed products. Also, there is no evidence to support a finding that Respondent received any commercial gain from the use of the site or the disputed domain name. The burden is on Complainant to produce evidence that proves its claim. The Panel is not satisfied that Complainant has met its burden of proof in this case. As such, the Panel agrees that Respondent uses the website for noncommercial purposes to host a fan site. The panel finds that Respondent has rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).

The Complainant further contends that Respondent’s website links consumers to websites which “appear” to be counterfeit. Respondent argues that while the domain name does contain links, those links all redirect users to third-parties who legitimately sell Complainant’s products. Using a domain name to display links to third-party websites does not necessarily indicate that a respondent lacks rights in a domain name. See INVESTools Inc v. KingWeb Inc., FA 598845 (Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)). Respondent avers that it displays links because it only desired to assist users in finding products relating to Complainant’s MINECRAFT mark. Complainant has offered no evidence that any of the websites are illegitimate or counterfeit. Therefore the Panel holds that Respondent has rights in the <minecraftbedroom.com> domain name per Policy ¶ 4(c)(i), even though it contains third-party links.

Registration and Use in Bad Faith

In this case, Complainant has presented allegations of bad faith registration and use of the disputed domain name. However, the evidence presented does not support a finding of bad faith registration and use under Policy 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

First, the Panel has found that Respondent has rights or legitimate interests in the <minecraftbedroom.com> domain name pursuant to Policy ¶ 4(a)(ii). Therefore, the issue of bad faith registration becomes moot. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

Second, the panel has found that Respondent uses the domain name to host a noncommercial fan site to provide information and ideas to create a MINECRAFT themed bedroom. Using a confusingly similar domain name to host a fan website can show that a respondent did not register a domain name in bad faith. See Spark Networks USA, LLC v. Dennis Tesic, FA 1411839 (Forum Nov. 23, 2011) (finding no bad faith “where the Respondent operated a fan club website without commercial gain.”); see also Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001) (finding that operating a fan site at the <brucespringsteen.com> domain name did not show an intent, for commercial gain, to misleadingly divert consumers).

And finally, Respondent argues that while the domain name does contain links, those links all redirect users to third-parties who legitimately sell Complainant’s products. Complainant has not produced any evidence to the contrary. Using a domain name to display links to third-party websites does not necessarily indicate bad faith under the Policy. See Who Dat?, Inc. v. Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 12963971, FA 1759773 (Forum Dec. 26, 2017) (“Certainly, Complainant might well have a trademark issue with that shirt manufacturer. While the link is buried and hard to find, it still exists. However, the Panel finds the link is not connected to the primary purpose of the domain name-a non-commercial fan site.”). Respondent asserts that it displays links because it only desired to assist users in finding products relating to Complainant’s MINECRAFT mark. The Panel agrees with Respondent’s assertions and finds that Respondent did not register or use the <minecraftbedroom.com> domain name in bad faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <minecraftbedroom.com> domain name shall REMAIN with Respondent.

Daniel B. Banks, Jr., Panelist

Dated: April 30, 2018


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