World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mind Candy Ltd v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master

Case No. D2010-1002

1. The Parties

The Complainant is Mind Candy Ltd of London, United Kingdom of Great Britain and Northern Ireland, internally represented.

The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Transure Enterprise Ltd, Host Master of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <moshimonstercheats.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2010. On June 18, 2010, the Center transmitted by email to Above.com, Inc. 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 2, 2010. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 29, 2010. The Center verified that the Complaint together with the amendment to the Complaint and the amended 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 the Respondent of the Complaint, and the proceedings commenced on July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2010.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 4, 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.

4. Factual Background

The Complainant is a United Kingdom (“U.K.”) corporation that operates a children’s online game called “Moshi Monsters”. The Complainant has been using the trademark MOSHI MONSTERS in connection with: key rings since January 10, 2007; computer software for use in the field of computer games since January 3, 2008; printed matter since January 3, 2008; toys since January 10, 2007; and entertainment services since January 3, 2008. The Complainant owns two trademark registrations for the trademark MOSHIMONSTERS, including United States (“U.S.”) Registration No. 3,793,144 (Registered May 25, 2010); and Community Trade Mark (“CTM”) Registration No. 006090071 (Registered November 5, 2010). The Complainant operates the website <moshimonsters.com>.

The Respondent registered the disputed domain name <moshimonstercheats.com> on January 1, 2009. At the time of filing the complaint, the disputed domain name <moshimonsterscheats.com> reverted to a website that provided a sponsored listing page displaying a wide range of websites with links to on-line game resources.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the disputed domain name <moshimonstercheats.com> is confusingly similar to the Complainant’s trademark MOSHI MONSTERS.

The Complainant owns trademark registrations for MOSHI MONSTERS, namely U.S. Trademark Registration No. 3,793,144 and CTM trademark Registration No. 006090071.

(b) Rights or Legitimate Interest

The Complainant contends that the Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name. The Respondent is using a confusingly similar domain name to operate a website that profits from “click-through” advertising royalties generated through use of the MOSHI MONSTERS name and brand. The Complainant also contends that the Respondent is not making a legitimate or fair use of the disputed domain name, or making any bona fide offering of goods and/or services. The Complainant submits that the Respondent is using the disputed domain name <moshimonstercheats.com>, which is confusingly similar to its registered trademark for the purpose of monetary gain, by misleading Internet users looking for the Complainant’s site into thinking that there is some affiliation between the Respondent and Complainant websites.

(c) Registered and Used in Bad Faith

The Complainant contends that the disputed domain name <moshimonstercheats.com> was registered and is being used in bad faith on the following factors: (1) the Respondent registered the disputed domain name to profit from “click through” advertising royalties generated through use of the Complainant’s name and brand (2) the Respondent’s use of a confusingly similar domain name to operate a website that provides on-line game services similar with the Complainant’s services amounts to bad faith use because it misleads consumers into thinking there is some affiliation between the Complainant and the Respondent’s websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the MOSHI MONSTERS trademark, by virtue of its U.S. Trademark Registration No. 3,793,144 and CTM trademark Registration No. 006090071.

The Panel finds that the disputed domain name <moshimonstercheats.com> is confusingly similar to the Complainant’s trademark MOSHI MONSTERS, because the domain name in question contains the main elements of the trademark, namely MOSHI MONSTERS in its entirety. The Panel accepts that the addition of the descriptive and common word “cheats” does not serve to distinguish the disputed domain name from the Complainant’s trademark in any meaningful way. The word “cheats” is a common word in the English language, meaning to mislead, dupe, or fool and accordingly, the word “cheats” simply suggests the type of service provided by the Respondent; namely links to websites that show ways to cheat in on-line games.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any rights or legitimate interest in the disputed domain name.

The Respondent was not known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services.

The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use the MOSHI MONSTERS trademark.

In light of the Respondent’s failure to file any response to the Complainant’s contentions which have satisfied the Panel as prima facie demonstrating that the Respondent lacks rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has satisfied the second requirement of the paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Respondent had used the disputed domain name, <moshimonstercheats.com> in connection with a click-through website that provides a sponsored listing page displaying a wide range of websites with links to on-line game resources. The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s trademark and the Respondent did not file any response contesting this claim. The Panel is prepared to find that the Responded deliberately traded on the goodwill of the Complainant, by attracting Internet users and diverting Internet traffic intended for the Complainant’s website to the Respondent’s website when it adopted and used the <moshimonstercheats.com> domain name.

For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name <moshimonstercheats.com> in bad faith. Therefore, the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <moshimonstercheats.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Dated: August 18, 2010

 

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