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Offering Bona Fide Goods or Services Versus Trading on Trademark’s Goodwill

Win one, lose one. Different Panels; same Complainant, the trademark holder of MOSHI MONSTERS; different Respondents; The word “cheats” is added in both domain names. However, <moshi-cheats.com> used descriptively is ruled legal [Mind Candy Ltd v. Gamers Guides L.L.C, D2010-0995 (WIPO August 12, 2010)]; and, moshimonstercheats.com> used misleadingly infringing [Mind Candy Ltd v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, D2010-1002 (WIPO August 18, 2010)]. The decisions turn on what the Respondents actually do and the content of their websites.

The “moshi-cheats” Respondent “is in the business of supplying guides to various computer games.” “Cheat” in the context of game learning appears to have lessened its moral failing. To use a “cheat” is not a vice; it is not “cheating” the public; it is offering a tutorial, although like “cheating” (from which it is derived) it is intended to give the player an advantage. Knowledge in games is power. The Respondent explains that “[u]sers 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.”

Generally, adding words to a trademark – geographic designations for example – does not create a distinctive name, but an addition that describes a different category of goods or services that is transformative is distinctive in its own right. It rides on the trandmark to convey a different business. This has been discussed before in cases involving nominative fair use. The domain name is confusingly similar to the extent that it incorporates the dominant term of the trademark, but there is no “likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” paragraph 4(b)(iv) of the Policy. If the Respondent in Mind Candy <moshi-cheats.com> in fact offers what the domain name promises, then it states a good defense under paragraph 4(c)(i) of the Policy. The Policy found 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 fact that at some earlier point in time the Respondent used the Complainant’s copyright Moshi Monsters images does not change the outcome. “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.”

These observations are relevant when turning to the other Mind Candy case involving <moshimonstercheat.com> because the Respondent there did not offer what in the domain name it advertised. It was “cheating” the Complainant as well as the public as we customarily understand the term. Rather than offering a tutorial or “cheat” on the game it was using the domain name “in connection with 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 inference is that the Respondent was “deliberately trad[ing] ed 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.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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