WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc v. Carl Wright, NA / Domain Privacy Protector Ltd.
Case No. D2012-2238
1. The Parties
The Complainant is Take-Two Interactive Software, Inc, Los Angeles, California, United States of America, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
The Respondent is Carl Wright, NA, Greater Manchester, United Kingdom of Great Britain and Northern Ireland / Domain Privacy Protector Ltd, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <getgtavbeta.com> is registered with LCN.COM Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2012. On November 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2012, 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 November 21, 2012 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 November 26, 2012.
The Center verified that 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 November 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on January 15, 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
The Complainant based in the United States is a video game developer and publisher which has in particular produced through its subsidiary Rockstar Games, Inc. the video game series known as “Grand Theft Auto” or “GTA” which was first released in 1998. The Complainant owns a United States federal trade mark registration since 1999 for the GRAND THEFT AUTO logo mark under registration number 2,148,765 and also a federal trade mark registration for the word mark GTA since 2008 under number 3,439,237.
The disputed domain name was registered on May 6, 2012.
5. Parties’ Contentions
The Complainant notes that its GRAND THEFT AUTO game is one of the most successful video game series of all time, winning numerous awards for its game design and storyline. It says that in an industry in which the sale of a million units is considered a hit, the success of the various GTA series is apparent in circumstances that the most recent instalment in the series GRAND THEFT AUTO IV sold 20 million units alone and that over 112 million units of the games in the GTA series have been sold to date. In October 2011, the Complainant says that it announced the next instalment in the GTA franchise, GRAND THEFT AUTO V (“GTA: V”) but has not and will not offer a “beta” version. The first official trailer for GTA: V was released in November 2011. The Complainant submits that its game and marks have been extensively publicised and advertised and that for example an Internet search on the Google site for “GTA” brings up 63 million hits concerning the Complainant and its products.
The Complainant submits that the disputed domain name incorporates the entirety of the Complainant’s registered GTA trade mark. It says that the only differences between the Complainant’s name and the disputed domain name are (i) the use of the word “get, ” (ii) the use of the Roman numeral “v” (to signify the sequel GTA: V), and (iii) the use of the word “beta” to indicate a pre-release limited access version of the game. The Complainant says that these differences are non-distinctive and do not change the overall impression of disputed domain name based on the dominant and distinctive feature being the GTA mark. The Complainant says that there is a very significant degree of worldwide repute attaching to the GTA mark which has been used since 1998 which means that it is the distinctive and dominant element of the disputed domain name. Accordingly the Complainant submits that the disputed domain name is confusingly similar to its registered trade mark GTA.
The Complainant submits that the Respondent is not using the disputed domain name with its authority, has no obtained any trade mark rights in the complainant’s GTA mark and is not making a legitimate or non-commercial fair use of its mark in the disputed domain name. Neither says the Complainant is the Respondent making a bona fide use of the disputed domain name.
The Complainant suggests that the Respondent is using the Complainant’s mark to generate revenue by attempting to collect personal information by falsely offering a beta version of Complainant’s GTA: V video game (which does not yet exist for public use) via the Respondent’s website. The disputed domain name resolves to a website that uses Complainant’s content and trade marks including a variety of screenshots and images from GTA: V, as well as Complainant’s distinctive GRAND THEFT AUTO and GTA marks and logos. The site purports to offer early “beta” access to GTA: V to users who submit personal information, and download what the complainant considers could be a malicious piece of software amounting to a phishing scheme.
This says the Complainant amounts to intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website under paragraph 4(b)(iv) of the Policy. In addition the Complainant says that this conduct amounts to a calculated attempt to foreclose the Complainant from promoting its products on the Internet. This wilful misappropriation of the exclusive property of Complainant is disruptive to the business of the Complainant under paragraph 4(b)(iii) of the Policy. As a result the Complainant submits that the disputed domain name has both been registered and used in bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has developed a very significant reputation in relation to its GRAND THEFT AUTO video game and mark over a number of years and that the mark GTA is an abbreviation referring to this game. The Complainant has demonstrated that it owns registered trade mark rights in the GTA mark in the United States under number 3,439,237.
The disputed domain name wholly incorporates the Complainant’s GTA mark together with the words “get” and “beta” and the letter “v”. The Complainant submits that this is intended to suggest to Internet users the concept of obtaining a “beta” or testing version of the latest GTA game. The Panel accepts that that the Complainant’s interpretation of the disputed domain name seems to be the most likely one and that none of the other elements of the disputed domain name are distinctive to the extent that they distinguish the disputed domain name from the Complainant’s GTA mark. In these circumstances and considering the substantial degree of renown attaching to the Complainant’s GTA mark, the Panel finds that the overall impression of the disputed domain name in this case concerns the Complainant’s GTA mark and that in these circumstances the disputed domain name is confusingly similar to the Complainant’s GTA registered mark.
The Panel finds as a result that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
There is no evidence before the Panel that the Complainant is offering bona fide goods or services under the disputed domain name, is commonly known by the disputed domain name or by the mark GTA or is making a fair or legitimate use of the disputed domain name. For these reasons and as set out below the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not rebutted this case.
Accordingly, the Panel finds that the Complaint succeeds under the second limb of the Policy.
C. Registered and Used in Bad Faith
In view of the very substantial renown attaching to the Complainant’s GRAND THEFT AUTO game and GTA mark since 1998, the Respondent’s registration of the disputed domain name some 6 months or so after the release of version 5 of the Complainant’s GTA game, the lack of explanation or evidence of a bona fide reason for having made the registration and the Complainant’s submission that the disputed domain name resolved to a website that uses Complainant’s copyrighted content and Complainant’s trademarks and a variety of screenshots and images from GTA: V, the Panel infers that the disputed domain name was registered by the Respondent in bad faith.
The Complainant submits that the website at the disputed domain name offered early “beta” access to the Complainant’s GTA: V game for users who submit personal information and download what may be a malicious piece of software. The Complainant therefore assumes that the website has been used by the Respondent for a “phishing” scheme. Somewhat surprisingly, the Complainant did not annex screenshots of the Respondent’s website at the disputed domain name in evidence and it would appear that the disputed domain name no longer resolves to this website. However in circumstances that the Respondent chose not to rebut the Complainant’s assertion in this regard or to explain its usage and in view of the Panel’s findings above concerning the circumstances of registration, the Panel accepts the Complainant’s submission concerning use. Accordingly, the Panel finds that the Respondent has used the disputed domain name in terms of paragraph 4(b)(iv) of the Policy to deceptively divert the public to the Respondent’s website in order to benefit commercially by improperly trading on the renown and goodwill attaching to the Complainant’s GTA mark. The Panel noted that the Respondent’s initial use of a privacy service in these circumstances only serves to reinforce its consideration of bad faith in this case.
As a result the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the complaint succeeds under the third element 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 <getgtavbeta.com> be transferred to the Complainant.
Date: January 27, 2013