The Complainants are Microsoft Corporation of Redmond, Washington, United States of America and Microsoft Limited of Reading, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.
The Respondent Greenlight Tech Services Limited of Stockholm, Sweden. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is OVH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2018. On August 6, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 6, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In reply to a request for clarification by the Center, the Complainant filed an amendment to the Complaint on August 16, 2018.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 18, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the ADR Rules, Paragraph B(5). 4. Factual Background
The first Complainant was founded in 1975 and is a worldwide leader in software, services and solutions. The company is incorporated under the law of the United States of America. The second Complainant is a wholly owned subsidiary of the first Complainant.
The first Complainant acquired the Swedish based company Mojang Synergies AB in 2014 and is now a wholly owned subsidiary of the first Complainant. Mojang Synergies AB is the developer of the internationally recognised video game, “Minecraft” and holds registrations of the mark MOJANG worldwide including the European Union Trade Mark No. 11607728 MOJANG, which was applied for on February 26, 2013 and registered on July 3, 2013 in respect of classes 9, 35, 38.
The disputed domain name was registered on January 2, 2018. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainants assert that the disputed domain name is identical to the mark MOJANG in which the first Complainant holds rights through its subsidiary Mojang Synergies AB.
The Complainants further assert that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not related to the Complainants. The Respondent has no rights to nor is the Respondent commonly known by the name “Mojang”. Also, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Lastly, the Complainants assert that the Respondent registered the disputed domain name in bad faith and continues to make use of the name in bad faith. The disputed domain name is thus being used to send emails from an email address using the disputed domain name, namely, “[...]@”, to existing Mojang server owners, i.e., to customers of the Complainant. These emails purported to come from a genuine employee of the Complainant, working in Mojang’s brand enforcement team. The emails contained the subject line “Important message from Mojang regarding your server” and sought to mimic the standard email sent by the Complainant to server owners to flag issues with specific servers maintained by existing customers. By doing so the Respondent has clearly attempted to commercially benefit, unfairly and opportunistically from the goodwill associated with the Complainants trade mark. This conduct is potentially criminal behavior.
Further, given the well-known nature of the MOJANG mark, any attempt by the Respondent to actively use the disputed domain name would lead, and inevitably has led, to a likelihood of consumer confusion.
And finally, the Respondent’ s use of false and intentionally vague contact and address details for the purposes of EURID’ s WhoIs database is further evidence of the Respondent’ s bad faith and its attempts to avoid detection, which, subject to the Respondent rebutting the presumption of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law and where it:
(a) has been registered by its holder without rights or legitimate interests in the name; or
(b) has been registered or is being used in bad faith.
Article 22(11) of the Regulation states that “the ADR panel shall decide that the domain name shall be revoked, if it finds that the registration is speculative or abusive as defined in Article 21. The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733/2002.”
This provision is reflected in paragraph B(11)(b) of the ADR Rules, stating that the sole remedies available pursuant to an ADR proceeding where the respondent is the domain name holder in respect of which domain name the complaint was initiated shall be limited to revocation or to the transfer of the domain name to the complainant provided that it satisfies the eligibility criteria established for the registration of “.eu” domain names. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Panel finds that the disputed domain name is identical (in the sense of the Regulation) to the trademark MOJANG because it contains the trademark in its entirety. The country code Top-Level Domain (“ccTLD”) “.eu” suffix does not preclude a finding of identity where it otherwise exists, as it does in the present case.
As mentioned above, the recorded owner of the MOJANG trademark registrations is Mojang Synergies AB and not one of the Complainants. The Complainants have however filed evidence that Mojang Synergies AB is a company that is fully owned by the first Complainant, therefore for purposes of this proceeding the first Complainant has the right to invoke the MOJANG trademark in this proceeding.
Therefore, the Panel finds that the Complainants have proven that the disputed domain name is identical to a name in respect of which the first Complainant has rights, according to the first requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests
According to Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules, any of the following circumstances, in particular but not limited to, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name:
(a) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to it in connection with the offering of goods or services or has made demonstrable preparations to do so;
(b) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(c) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national and/or Community law.
According to the Complainants, the first Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in Section C) does not support a finding of rights or legitimate interests. C. Registered or Used in Bad Faith
According to Article 21(1)(b) of the Regulation, a complainant is required to demonstrate that a domain name has been registered or used in bad faith.
Article 21(3) of the Regulation and Paragraph B(11)(f) of the ADR Rules provide a non-exhaustive list of circumstances which, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith:
(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognized or established by national and/or Community law, or to a public body; or
(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or Community law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondents website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
Given the highly distinctive nature of the mark MOJANG, the lack of any explanation from the Respondent as to why it registered the disputed domain name, and the way that the disputed domain name has been used clearly indicates that the Respondent was aware of the MOJANG mark when the Respondent registered the disputed domain name.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Respondent has used the disputed domain name as email address in what is clearly an attempt to conduct fraudulent activities for commercial gain, by creating a likelihood of confusion as to the source, affiliation, or endorsement of the Respondent’s activities with the first Complainant and its fully owned company Mojang Synergies AB, and with the mark MOJANG in which the first Complainant holds rights.
Furthermore, the Respondent has used false and misleading contact details when registering the disputed domain name, just as the Panel finds that it is implausible that any good faith use can be made by the Respondent of the disputed domain name.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith and the Panel thus that the requirements of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules are met. D. Remedies requested
The remedies that are available under the ADR Rules are dealt with in Paragraph B(11)(b). This paragraph provides for the remedy to be limited to one of revocation of the Domain name in dispute, unless the Complainant satisfies the general eligibility criteria for registration (of domain names) set out in Article 4(2)(b) of Regulation (EC) No 733/2002, in which case a transfer of the disputed domain name to the Complainant may be ordered.
The eligibility requirements of Article 4(2)(b) of Regulation (EC) No 733/2002 provide that
“The Registry shall:
(…)…………..
(b) register domain names in the “.eu” TLD through any accredited .eu Registrar requested by any:
(i) undertaking having its registered office, central administration or principal place of business within the Community, or
(ii) organization established within the Community without prejudice to the application of national law, or
(iii) natural person resident within the Community;”
The Complainants have requested that the disputed domain name be transferred to the second Complainant, Microsoft Limited. The Panel notes that the second Complainant, as well as the registered owner of the MOJANG mark, is fully owned by the first Complainant, and since the second Complainant is an organization that is “established within the Community”, the Panel finds that the requirement of Article 4(2)(b) of Regulation (EC) No 733/2002 and therefore Paragraph 11(b) of the ADR Rules have been satisfied. 7. Decision
For the foregoing reasons, in accordance with Paragraph B (11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the second Complainant, Microsoft Limited.
Knud Wallberg
Sole Panelist
Date: November 21, 2018
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