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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. Hakan Bulgurlu, Apitech Yazilim ve Danismanlik

Case No. DCO2018-0013

1. The Parties

The Complainant is Take-Two Interactive Software, Inc. of New York, New York, United States of America ("United States"), represented by Kelley Drye & Warren, LLP, United States.

The Respondent is Hakan Bulgurlu, Apitech Yazilim ve Danismanlik of Denizli, Turkey.

2. The Domain Name and Registrar

The disputed domain name <gtagames.co> is registered with FBS Inc. (the "Registrar").

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2018, 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.

Pursuant to the Complaint submitted in English and the registrar verification dated May 14, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on May 15, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On May 18, 2018, the Complainant submitted its request for English to be the language of the proceeding. At the same date, the Respondent submitted its request for Turkish to be the language of the proceeding.

The Center verified that 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 and 4, the Center formally notified the Respondent in English and Turkish of the Complaint, and the proceedings commenced on May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. According to the Rules, paragraph 17, on June 19, 2018, the proceeding was suspended until July 18, 2018. Upon the Complainant's request, the suspension period was extended until August 17, 2018. Upon the Complainant's request, the proceeding was reinitiated on August 17, 2018. The Respondent submitted informal email communications but did not submit any formal Response and the due date for Response was August 18, 2018. Accordingly, on August 20, 2018, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Kaya Köklü as the sole panelist in this matter on August 22, 2018. 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 worldwide publisher, developer and distributor of interactive entertainment software. One of the Complainant's well-known products is the "Grand Theft Auto" series of video games, which is since 1997 available on the international market published in various editions.

The Complainant is the registered owner of the trademark GTA, which is an acronym for "Grand Theft Auto". The GTA trademark is registered in many jurisdictions worldwide, such as in the European Union (i.a. with trademark nos. 1154764, 7405558 and 8374341), cf. Annex 4 to the Complaint.

The Complainant also owns and operates various domain names which incorporate the trademark GTA, such as <gta4.com> or <gta5.com>.

The disputed domain name was registered on May 2, 2015.

The Respondent seems to be a representative of a software entity located in Istanbul, Turkey.

The screenshots, as provided by the Complainant in the case file (cf. Annex 7), show that the disputed domain name resolved to a website in the English language offering access to a large range of different online video games, by prominently using the Complainant's trademark GTA without publishing any visible disclaimer describing the (non-existent) relationship between the Parties. Currently, the disputed domain name redirects to the website "www.truckgamesplay.net/gta-games" and its use remains the same.

5. Parties' Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its GTA trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant's GTA trademark, when registering the disputed domain name, particularly as the Respondent prominently uses the Complainant's GTA trademark on the website linked to the disputed domain name.

B. Respondent

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

However, the Center received various email communication from the Respondent.

In its emails, the Respondent mainly indicates that it is prepared to remove the GTA trademark and logo from the website linked to the disputed domain name. Additionally, the Respondent indicates that it alternatively would be prepared to sell the disputed domain name to the Complainant.

6. Discussion and Findings

6.1. Language of the Proceeding

Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant, while the Respondent has posted English content on the website at the disputed domain name and has failed to formally respond to the Complaint or respond to the Center's communication about the language of the proceedings, even though communicated in Turkish and in English.

Hence, the Panel determines in accordance with the Complainant's request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint's contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the GTA trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in GTA. As evidenced in the Complaint, the Complainant is the owner of various GTA trademarks in different jurisdictions, e.g. in the European Union, registered many years before the registration of the disputed domain name.

Although not identical, the disputed domain name fully incorporates the Complainant's trademark GTA.

The disputed domain name differs from the Complainant's trademarks only by the addition of the term "games". As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity. The Panel believes that the addition of the term "games" does not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant's GTA trademark.

Consequently, it is the Panel's view that the disputed domain name is confusingly similar to the Complainant's GTA trademark.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's GTA trademark in a confusingly similar way within the disputed domain name. Particularly, the Respondent has not been granted a license or any other authorization by the Complainant.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. The Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel believes that the Respondent's intention was to primarily create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant's GTA trademark, apparently for commercial gain.

The Panel is convinced that the Respondent must have had this trademark in mind when registering the disputed domain name. At the date of registration of the disputed domain name, the Complainant's GTA trademark was already prominently used and recognized particularly among video game players worldwide, including in Turkey.

In view of the Panel, it is rather obvious that the Respondent tries to gain commercial benefit by using a domain name which fully incorporates the Complainant's GTA trademark. It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant. After having reviewed the Complainant's screenshots of the website linked to the disputed domain name (cf. Annex 7), the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel notes that the Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Quite the opposite, the design of the website linked to the disputed domain name and the prominent use of the Complainant's GTA trademark in combination with a similar logo of the Complainant is sufficient evidence in view of the Panel that the Respondent intentionally tries to attract, for illegitimate gain, Internet users to its website by creating a likelihood of confusion with the Complainant's GTA trademark as to the source, sponsorship, affiliation or endorsement of its website. In the Panel's view, the Respondent is misrepresenting itself as the trademark owner without being entitled to do so.

Additionally, the Panel finds that the Respondent's failure to respond to the Complainant's contentions also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded instead of offering the disputed domain name to the Complainant for sale.

All in all, the Respondent did not provide any convincing argument and evidence for what legitimate purpose it registered the disputed domain name, although it had the chance to do so. In light of the above, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent which is not related to the trademark rights owned by the Complainant.

Hence, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 <gtagames.co> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: September 7, 2018

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