WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mind Candy Ltd v. Gamers Guides L.L.C
Case No. D2010-0995
1. The Parties
Complainant is Mind Candy Ltd of London, United Kingdom of Great Britain and Northern Ireland.
Respondent is Gamers Guides L.L.C of Greenville, South Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <moshi-cheats.com> is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2010. On June 17, 2010, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On June 21, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed amendments to the Complaint on June 29, 2010 and July 2, 2010. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2010. The Response was filed with the Center on July 20, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 30, 2010. 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 Rules, paragraph 7.
On July 23, 2010 and July 27, 2010, Complainant wrote to the Center offering further comment on the Response. Respondent wrote to the Center in reply on July 28, 2010. The Policy and the Rules make no provision for further filings other than at the request of the Panel (Rule 12), however, the Panel has a general power under Rule 10(a) of the Rules to conduct the administrative proceeding in such manner as it sees fit. This has been held by many panelists to empower the panel to accept or reject further filings in the exercise of its discretion – see AutoNation Holding Corp v. Rebea Alawneh, WIPO Case No. D2002-0058. The discretion to accept a further filing should be exercised only in exceptional circumstances, including circumstances where new evidence becomes available or the Response raises matters which could not reasonably have been foreseen at the time of filing the Complaint. No such circumstances have been shown to exist in this case. Furthermore, the purported further filing does not add materially to Complainant’s case. The Panel therefore declines to accept Complainant’s further filing. Respondent’s reply is therefore moot and is likewise rejected.
4. Factual Background
The disputed domain name was registered on March 12, 2009.
Complainant, a United Kingdom company is a producer of online children’s games including a game called “Moshi Monsters” which it provides through its website at “www.moshimonsters.com”. It owns United States (“U.S.”) and Community trademarks for a device mark comprising the word “moshi” rendered to represent a monster, overlying the word “monster”. In its e-mail correspondence, it depicts a cartoon character of a “monster” with the words “Visit my Moshi Monster”. Complainant’s U.S. registration is dated May 25, 2010 with a filing date of August 2, 2007 and claimed date of first use of October 1, 2007.
Respondent, a United States of America company, claims to be in the business of providing guides for computer games and to have created a network of websites game guides, most of which contain a portion of the game name as a means of identification.
5. Parties’ Contentions
Complainant’s contentions are set out fully below:
“A. The domain name[s] [is/are] identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1).
Our website is “www.moshimonsters.com” it - is a children’s online casual game called “Moshi Monsters”, Mind Candy Ltd own the CTM and US trademarks for Moshi Monsters numbers 006090071 and 3793144 and respectively in classes 6 – Key rings, 9 – Computer software, 16 – Paper, 28 – Toys and 41 – Entertainment Services. Moshi-cheats.com is confusingly similar to Moshimonsters.com and aimed to profit from fraudulently obtaining MoshiMonsters users e-mail addresses by making them think that the Moshi-cheats.com was affiliated with Moshimonsters.com.
B. The Respondent has no rights or legitimate interests in respect of the domain name[s]; (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2)).
The Respondent was petitioned by Mind Candy Ltd’s legal representative on the July 18, 2009, to take down the content at “www.moshi-cheats.com” as the material breached copyright by using Moshi Monsters copyright images without permission. This was actioned and the content on the site was removed.
C. The domain name[s] [was/were] registered and [is/are] being used in bad faith. (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)).
Moshi-cheats.com is confusingly similar to Moshimonsters.com and aimed to profit from fraudulently obtaining MoshiMonsters users e-mail addresses by making them think that the Moshi-cheats.com was affiliated with Moshimonsters.com.”
Respondent’s contentions may be summarized as follows:
The domain name is not confusingly similar to Complainant’s MOSHI MONSTERS logo trademark. Complainant has no rights in either the word “moshi” or the word “cheats” and therefore has no rights in moshi-cheats. Further, Respondent’s use falls within the nominative and fair use and is in no way confusing to the average Internet user. There are many computer game guide sites on the Internet including “www.moshimonsterscheats.net” and “www.moshimonsterscheats.org” neither of which are owned by Respondent.
Respondent’s website at the disputed domain name is currently inactive, but when it is active, its content makes it clear that there is no affiliation between Respondent and Complainant. Respondent exhibits a copy of the formerly active webpage in support of this contention.
As to Complainant’s reference to allegations of copyright infringement in July 2009, Respondent states that it acquiesced in good faith to Complainant’s demand and took down the site and removed the alleged infringing images. Respondent states that it intends to reactivate the website in the near future.
Respondent is in the business of supplying guides to various computer games and is not a competitor of Complainant.
Users are familiar with the difference between the official Moshi Monsters game site and an unofficial guide site and that such sites in no way compete with the game sites but serve to promote and increase the popularity of such games.
Complainant has brought the Complaint in bad faith in an attempt at reverse domain name hijacking or to harass Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant’s registered trademark rights are in a distinctive logo including the words “Moshi Monsters”. They are not in respect of the words “Moshi Monsters” per se. Nevertheless, it is inevitable that the game would be referred to by the words Moshi Monsters rather than by reference to the logo. Although the words Moshi Monsters and Moshi Cheats are, as a whole, significantly different, it is nevertheless the case that a dominant particular of Complainant’s mark is the word “Moshi” and that word is the word first appearing both in Complainant’s trademark and in the disputed domain name. On balance therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s trademark. Respondent’s contention that the word Moshi is a common word meaning “hello” does not negative that similarity.
The Panel therefore finds that the disputed domain name is, objectively, confusingly similar to Complainant’s MOSHI MONSTERS trademark.
B. Rights or Legitimate Interests
The only fact asserted by Complainant in support of its contention that Respondent has no rights or legitimate interests in the disputed domain name is that initially, Respondent’s website used Complainant’s copyright Moshi Monsters images. Respondent removed those images in response to Complainant’s objection. The use of the images may have breached Complainant’s copyright but that, per se, is irrelevant to the question of whether or not Respondent has a right or legitimate interest in the domain name.
The Panel finds that Complainant has failed to discharge the onus upon it to make a prima facie showing of absence of Respondent’s rights or legitimate interests.
The Panel further finds, in any event, that Respondent’s use of part of Complainant’s trademark, the word “Moshi”, as an identifier for its “cheats” site for that particular game, does not negative the legitimacy of Respondent’s use of the disputed domain name. The provision of such sites is a common and legitimate activity and it is difficult to see how such service can be provided without referring in some way to the name of the game. Furthermore, the content of Respondent’s website clearly establishes that it is unofficial and not connected with Complainant.
The Panel therefore finds that Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In the light of the Panel’s finding under paragraph 6B above, it is unnecessary to consider this ground. The Panel notes however, that Complainant has provided no evidence of Respondent’s bad faith.
7. Reverse Domain Name Hijacking
Complainant has failed in its Complaint however, there is no evidence that it brought the Complaint in bad faith. The Panel therefore declines to make a finding of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Dated: August 12, 2010