WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Wattie Keel
Case No. D2013-0319
1. The Parties
The Complainant is Take-Two Interactive Software, Inc. of New York, United States of America, represented by Mitchell, Silberberg & Knupp LLP, United States of America.
The Respondent is Wattie Keel of Paikuse, Estonia.
2. The Domain Name and Registrar
The disputed domain name <gta5downloadsecure.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2013, 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. The Complainant filed an amendment to the Complaint on February 18, 2013.
On February 25, 2013, the Respondent sent an email communication to the Center, written in Estonian, and wrote again in English on February 26, 2013. On February 26, 2013, the Center invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. On February 26, 2013, the Complainant wrote to the Center requesting to proceed to a decision in this matter. The Center acknowledged receipt on March 1, 2013 of the aforementioned email communications. On March 5, 2013 the Respondent sent a further email communication in English to the Center.
The Center verified that the Complaint together with the amendment 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 the Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Respondent did not file a formal Response, however he sent an email communication on March 6, 2013. On March 27, 2013, the Center informed the Parties that it would proceed to Panel Appointment.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 5, 2013. 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
According to the Complainant, its business is the development, marketing and publishing of interactive entertainment and video games for users of personal computers, mobile phones, tablet computers and other platforms.
“Grand Theft Auto”, also known as “GTA”, is a product of the Complainant’s subsidiary Rockstar Games, Inc. Since 1998, GTA has appeared in numerous variants including some that incorporate numbers or Roman numerals including “GTA 2”, “Grand Theft Auto III”, and “Grand Theft Auto IV”. These games are substantial, “Grand Theft Auto IV” taking about 30 hours to play through and having more than 70 hours of secondary story and activity material. About 112 million units of “Grand Theft Auto” variants have been sold.
The impending release of “Grand Theft Auto V” (“GTA:V”) was announced in October 2011 and the release of its trailer was publicised in leading newspapers in November 2011.
The Complainant holds trademarks for GRAND THEFT AUTO and GTA, including:
GRAND THEFT AUTO, word mark, United States Patent and Trademark Office (USPTO) principal register, registered April 7, 1998, registration number 2148765, classes 9, 16;
GTA, standard character mark, USPTO principal register, registered June 3, 2008, registration number 3439237, classes 9, 41.
Rockstar Games owns domain names related to the “Grand Theft Auto” series, including <grandtheftauto.com>, <gta2.com>, <grandtheftauto3.com>, <grandtheftautosanandreas.com>, <gtachinatownwars.com>, <gtavicecity.com>, <grandtheftauto4.com>, <grandtheftautoiv.com>, <gtaiv.com>, <gta4.com>, <grandtheftautov.com>, and <gta5.com>.
According to the Complainant, the Respondent is an individual or entity who is not in any business relationship with the Complainant. The Respondent’s email of February 26, 2013 acknowledged ownership of the disputed domain name, which appears to have been registered on December 9, 2012.
5. Parties’ Contentions
The Complainant has produced copies of searches through the Trademark Electronic Search System (TESS) providing summary details of the trademarks registered in its name as listed in section 4 above.
The Complainant contends that the disputed domain name incorporates entirely, and is confusingly similar to, the trademark GTA in which the Complainant has rights. The disputed domain name differs from the trademark GTA by the addition of the number “5”, which the Complainant says is meant to signify the game GTA:V. The disputed domain name also has the added words “download” and “secure” that, the Complainant submits, are meant to indicate the ability to download, from a secure source, a pre-release version of GTA:V. The Complainant submits, with reference to previous disputes under the Policy, that the incorporation of such generic or common expressions is not sufficient to avoid a finding of similarity.
The Complainant concedes that GTA:V, per se, is not yet a registered trademark. The Complainant submits, in summary, that GTA alone is the dominant feature of the trademark, and that it is not necessary for a trademark to be registered in order to fulfill the requirements of paragraph 4(a)(i) of the Policy. The Complainant says in summary that it has acquired considerable common law rights in the trademark GTA: V through analogous use and publicity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to use the trademark GTA and there is no association between the Complainant and the Respondent.
The Complainant refers to the Respondent’s burden to come forward with proof that he has rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case that he does not. The Complainant says there has been no use of the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is falsely offering a purportedly leaked “beta” version of GTA: V that does not in fact exist for public use. The Complainant has never offered a “beta” version of any game in the “Grand Theft Auto” series. The Respondent appears to be intending to use the disputed domain name for illegitimate purposes including the possible provision of malicious software and the collection of personal information, known as phishing. The Respondent is not commonly known as GTA and cannot establish that he is making legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Respondent is curtailing the Complainant’s right to exploit the value of its trademark on the Internet and is blocking the Complainant’s effort to capitalize on its exclusive rights to promote its products under the GTA name.
The Complainant has cited a number of previous decisions under the UDRP and in the courts that it wishes the Panel to take into consideration as possible precedent.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent made no formal Response. He did, however, make informal comments in email messages to the Center prior to the formal commencement of this proceeding, which were copied to the Complainant and have been provided to the Panel. It would be appropriate to reproduce in full those messages that were in English, as follows [verbatim]:
(February 26, 2013)
I’m really sorry about my english, so please keep that in mind and try to understand.
Due to the several e-mails from different people and the legal talk, that I understand even less than casual english I haven’t really got the point what I am dealing with here, but I see that the domain name (gta5downloadsecure.com) that belongs to me, what I haven’t been using for quite a while now seems to concerne you. I understand that and I am willing transfer or delete (as you wish) this domain right away. I’m fully co operational with you and hope that this problem will find its solution soon.
(March 5, 2013)
As I saw in ICANN Complaint, the Conclusion was to transfer the domain. That stated I’d like to say that I’m fully agreed to these terms and willing to transfer the domain as soon as possible.
Unfortunately I don’t speak legal English so I responded in casual English, I hope You can let someone to translate this for You.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 2(d) of the Rules states that communications shall be made in the language prescribed in paragraph 11 of the Rules, which states that ordinarily the language of the proceeding shall be the language of the Registration Agreement, which in this instance is English. The Panel is satisfied that the lack of a certified translation into English of the Respondent’s email of February 25, 2013 (which was not in any case a formal Response), has not disadvantaged him, since his emails in English of February 26, 2013 and March 5 and 6, 2013, have adequately stated his position.
The Respondent stated in those emails a willingness to cooperate fully and to delete or transfer the disputed domain name as soon as possible. Nevertheless, there is no provision under the Policy for a summary decision in the event that the Complainant wishes to proceed. The Panel must be satisfied that the Respondent’s capitulation is not, for instance, a consequence of inequality of arms and that the Complainant has proven its case according to the evidence on the balance of probabilities.
B. Identical or Confusingly Similar
The Complainant has produced satisfactory evidence that the Complainant has rights in the registered trademarks GRAND THEFT AUTO and GTA.
The Complainant has also produced evidence of extensive advertising on sites including billboards, transportation, bus shelters and point of sale, of games in the “Grand Theft Auto” series. Copies of media coverage in November 2011 of the impending release of “Grand Theft Auto V” have been produced. Taking into account the evidence of the high profile of the GRAND THEFT AUTO and GTA trademarks over a number of years, the Panel finds for the purposes of paragraph 4(a)(i) of the Policy that the Complainant has rights in the unregistered trademark GTA:V.
The disputed domain name is <gta5downloadsecure.com>. The Panel finds that, in the context of video game culture, the leading and prominent term “gta” of the disputed domain name is identical to the Complainant’s trademark GTA, which had been registered three and a half years earlier.
It may reasonably be anticipated that the “V” in the name of the game “Grand Theft Auto V”, and in its abbreviation GTA:V, would usually be verbalised or thought of mentally in the Arabic form “5”, following as it does from GTA versions 2, III and IV. Thus the term “5” in the disputed domain name is found to enhance confusing similarity to the trademark GTA by alluding to the newest version of the game, and “gta5” is found to be confusingly similar to the unregistered trademark GTA:V.
The term “downloadsecure” in the disputed domain name is found not to be distinguishing, but on the contrary to exacerbate confusion with the trademarks GTA and GTA:V by projecting the implication that the Complainant’s product may be downloaded from the Respondent’s online location, secure against the delivery of malicious, contaminated or corrupt code.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks within the meaning of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant must prove under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has asserted prima facie that the Respondent has no relationship with the Complainant and does not have rights in respect of the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case in any way satisfactory to the Panel, of which the following are illustrative examples:
“(i) before any notice to you of the dispute, your [the Respondent’s] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has made no submission in the terms of paragraph 4(c) of the Policy and the Panel cannot find any basis upon which the Respondent might demonstrate rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant has the onus of proving under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The registration or acquisition of a disputed domain name is a single act that happened on the relevant date. The construction of the presently disputed domain name clearly projects a primary purpose of registration, being the supply of GTA, version V or 5, by means of a purported secure download. The registered trademark GTA is undoubtedly well-known and heavily promoted, and is associated with a product claimed to have sold in over 112 million copies in all versions. The prospect of the string “gta” having been incorporated into the disputed domain name for any benign reason is negated by its clear allusion to the latest version of the game GTA, being version GTA:V, or in spoken form GTA5, and the implication of a secure source. It may further be noted that the registration of the disputed domain name was made by the Respondent in the month following the announcement of the release of the trailer for “Grand Theft Auto V”. The Respondent had no authority from the trademark holder to register the disputed domain name or to use the trademark GTA in any way. The Panel finds the disputed domain name to have been registered in bad faith.
As to use in bad faith, the Complainant states as fact that the Respondent, through the disputed domain name, purports to offer access to the game GTA:V in “beta” form, being a limited release version for testing. By such offering, irrespective of whether such a product existed, the Respondent would have been using the disputed domain name in bad faith within the terms of paragraph 4(b)(iv) of the Policy, by creating a likelihood that at least some Internet users may be confused initially into thinking they were dealing with a website authorised by the Complainant. The Complainant has not, however, produced any evidence, such as a screen shot, transcript, or letter of complaint from a customer, to substantiate its statement as to the use of the disputed domain name. The Panel, in the exercise of its powers to make limited factual enquiries into matters of public record (paragraph 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) found the disputed domain name to be inactive and that the Internet Archive (“www.archive.org”) held no past record of it. The Panel does not find sufficient evidence of use or mode of use to sustain the Complaint in respect of paragraph 4(b)(iv) of the Policy.
The Respondent, in his email of February 26, 2013, referred to the disputed domain name as “what I haven’t been using for quite a while”. The decision in the early case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, whilst not binding precedent, is widely cited in cases where there is no evidence of the active use of a disputed domain name. One of the principles discussed by the respected Panelist in Telstra was that the passive holding of a domain name, without apparent use, may constitute use within the meaning of paragraph 4(a)(iii) of the Policy if the panel finds that, in all the circumstances of the case, the respondent’s intentions for the domain name cannot be in good faith. Indication of bad faith may include, for example, the incorporation into the domain name of a well-known trademark for which the respondent can have no reasonable excuse.
In the present circumstances the Panel takes into account, among other things, that the disputed domain name, by its construction, is found to have been registered in bad faith; that it features prominently a well-known trademark for which the Respondent can have no reasonable excuse; and that any use within reasonable contemplation would inevitably cause confusion with the Complainant’s trademark and would inevitably lead Internet users to expect a delivery of the Complainant’s product that cannot legitimately be fulfilled. Use in bad faith may be found otherwise than under the provisions of paragraph 4(b) of the Policy. In all the circumstances the Panel finds, on the balance of probabilities, that the Respondent’s current passive holding of the disputed domain name is in circumstances that collectively constitute use in bad faith. The Panel finds for the Complainant under paragraph 4(a)(iii) of the Policy.
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 <gta5downloadsecure.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: April 15, 2013