Microsoft Corporation v Huy Hoang

WIPO Case No. D2025-2416

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Huy Hoang

Case No. D2025-2416

1. The Parties

The Complainant is Microsoft Corporation, United States of America, represented by D.M. Kisch Inc., South

Africa.

The Respondent is Huy Hoang, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <seaofthievesmerch.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2025.
On June 18, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 19, 2025, 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 (Redacted for Privacy, Privacy Service Provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on June 20, 2025, 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 amended

Complaint on June 23, 2025.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2025.

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The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 21, 2025. 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 multinational technology corporation headquartered in the United States of America and is a leading developer and provider of personal-computer software systems and applications, cloud computing services, video games and other online services, with global operations through its subsidiaries, affiliates and/or licensees. The Complainant’s portfolio of service and product offerings includes video games, video game hardware systems, content and subscriptions services, and various consumer merchandise products that promote its video games, including hats, T-shirts, housewares, and similar items, a number of which are manufactured and distributed by authorized licensees. Today, these offerings of goods and services are, according to the Complainant, used by approximately 1.4 billion consumers in around 190 countries across the world. One of the Complainant’s offerings is the action-adventure game branded SEA OF THIEVES where players assume the role of a pirate who completes voyages from different trading companies. Conceived in 2014 and released in 2018, this game is viewed as a commercial success, attracting more than 1 million players two days after it released, and in April 2024, Sea of Thieves reached 40 million players.

The Complainant owns a portfolio of trademark registrations for SEA OF THIEVES, including, but not limited to the following registered trademarks: United States of America Trademark Registration SEA OF THIEVES (word) No. 5,492,586 registered on June 12, 2018; and International Trademark Registration SEA OF

THIEVES (word) No. 1278052 registered on November 10, 2015 designating Australia, Switzerland, China,
European Union, India, Japan, Republic of Korea, Mexico, Norway, New Zealand, Russian Federation,
Türkiye, and Viet Nam.

The disputed domain name was registered on December 21, 2023, and the Complainant provides evidence that the Respondent connected it to a website which branded itself as the “official SEA OF THIEVES merch store” and which was essentially offering third party products branded with the Complainant’s SEA OF

THIEVES trademark and/or related images and content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant essentially contends that the disputed domain name is confusingly similar to its registered trademark for SEA OF THIEVES, because it includes this trademark in its entirety, regardless of the other terms in the disputed domain name. Further, the Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnishing the trademarks owned by the Complainant. Firstly, the Complainant contends that the Respondent is not an authorized official and authorized reseller, agent or licensee, the Complainant’s SEA OF THIEVES trademarks and/or official content. Secondly, the Complainant contends that the website at the disputed domain name is promoting and offering unauthorized third-party products of other commercial origin, namely alleged counterfeit items, featuring the Complainant’s SEA OF THIEVES trademark and/or official content. Thirdly, the Complainant contends that the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods, since, in the present case, the Respondent is offering unauthorized third-party products of

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other commercial origin featuring the Complainant’s SEA OF THIEVES trademark and/or official content. rather constitute the act of offering counterfeit goods. The Complainant argues that this in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods. The Complainant adds that the website further uses the Complainant’s registered SEA OF THIEVES trademarks and official content without authorization, while at the same time falsely claiming copyright in this material. The Complainant contends that this creates the illegitimate and false impression of an affiliation with the Complainant and further supports the false impression that such website is endorsed by the Complainant and/or that the website and/or the unauthorized third-party products are authorized by or originate from the Complainant, which, the Complainant argues, they do not. As to bad faith, the Complainant essentially argues that it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s SEA OF THIEVES trademark when registering the disputed domain name, as the Respondent used the disputed domain name to offer unauthorized products soon after registering the disputed domain name. Further, the Complainant contends that the term SEA OF THIEVES is purely an imaginative term and unique to the Complainant, and that it is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant. Finally, the Complainant essentially argues that it is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used it with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered SEA OF THIEVES trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “merch”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel also notes that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks, that no relationship exists between the Parties and that the website at the disputed domain name fails to clearly or prominently disclose this lack of affiliation, and in fact even strengthens the misrepresentations in this regard through its use of a misleading copyright notice claiming copyright ownership and by its prominent use of the Complainant’s marks and content likely protected by copyright. Furthermore, based on the record, the Respondent is not commonly known by the disputed domain name. The Panel finds that the Respondent’s use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, particularly given the Complainant’s significant reputation and the significant potential to mislead Internet users.

Furthermore, the Panel also agrees with the Complainant that the Respondent is not operating a permissible fan site (see section 2.7 of the WIPO Overview 3.0) since the website at the disputed domain name is in the first place a commercial website, and because this website clearly implies impersonation of, affiliation with or endorsement by the Complainant.

Finally, the Panel notes that the website at the disputed domain name falsely states that such site is the “official SEA OF THIEVES merch store”, and other elements such as the prominent use of the Complainant’s marks, copyrighted materials and the misleading copyright notice, which, taken together, also suggest impersonation or at least an affiliation with the Complainant. In this regard, Panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing off and the sale of counterfeit goods, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Moreover, the composition of the disputed domain name, incorporating the Complainant’s trademark with the additional term “merch”, which is descriptive of the Complainant’s merchandise products offering, carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has registered the disputed domain name which fully incorporates the Complainant’s trademarks for SEA OF THIEVES. Based on the evidence submitted by the Complainant, the Panel accepts that this trademark is widely used and well known. Therefore, the Panel finds that by registering the disputed domain name, the Respondent deliberately and consciously targeted the Complainant’s prior well-known trademarks for SEA OF THIEVES. This finding is incidentally further

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confirmed by the fact that the Respondent hosted an online shop at the disputed domain name alleging to be elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

the official retailer for SEA OF THIEVES merchandise, thereby directly impersonating the Complainant or at
least suggesting some sort of license or business affiliation. The Panel finds that this creates a presumption
of bad faith. The Panel also notes that the Complainant’s trademarks in this case predate the registration
date of the disputed domain name by many years, and that the Respondent could not have been reasonably
unaware of them. Furthermore, the Panel notes that even a cursory Internet search or trademark search at
the time of registration of the disputed domain name would have made it clear to the Respondent that the

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directed to an active website which showed a clear intent on the part of the Respondent to misleadingly pass it off as the Complainant’s website selling official merchandising products related to SEA

OF THIEVES. The Panel concludes from these facts that the Respondent was intentionally attracting Internet users for commercial gain to such website, by creating consumer confusion between the website associated with the disputed domain name and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. Further, the Panel notes that the website at the disputed domain name falsely stated that such site is an “official” retailer of SEA OF THIEVES merchandise, and made extensive use of the Complainant’s copyrighted content and marks to suggest impersonation or at least an affiliation with the Complainant. In this regard, Panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing off and the sale of counterfeit goods, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

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

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: July 28, 2025