WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Mar Arcangel
Case No. D2013-0012
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 Mar Arcangel of Sarajevo, Bosnia and Herzegovina.
2. The Domain Name and Registrar
The disputed domain name <gtavbeta.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on February 13, 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 develops and publishes video games designed for multiple platforms, including personal computers, mobile phones, “iOS” devices (e.g. iPhone, iPad), handheld gaming units (e.g. Sony Playstation Portable, Nintendo DS), and gaming console systems (e.g. Microsoft Xbox 360, Sony Playstation, Nintendo Wii), delivered through physical retail, digital download, online platforms and cloud streaming services.
One of the video game series produced by the Complainant, through its wholly-owned subsidiary, Rockstar Games, Inc., is “Grand Theft Auto” or “GTA”. The “Grand Theft Auto” series includes complex narratives that unfold in large virtual worlds depicting complex urban environments and all that accompanies them. The most recent installment in the series “Grand Theft Auto IV” sold 20 million units. To date, over 112 million units of the games in the “GTA” series have been sold.
The Complainant is the owner of a registered trademark GRAND THEFT AUTO (and design) (Reg. No. 2,148,765), which it filed with the United States Patent and Trademark Office (USPTO) on September 16, 1996, and registered on April 7, 1998. The Complainant is also the sole and exclusive owner of the federally registered trademark GTA (Reg. No. 3,439,237), with a first use date of September 30, 1999, filed with the USPTO on March 29, 2007, and subsequently registered on June 3, 2008.
Since 1998, the Complainant’s marks have been used extensively around the world on television, the Internet, in magazines, and in various other media. The Complainant has also spent tens of millions of dollars on various types of advertising involving the video games marketed and promoted under its marks. Those trademarks are distinctive and famous and are widely recognized throughout the United States and the world by millions of fans and consumers alike as being associated with the Complainant. The Complainant says that the fact that the Respondent has registered the disputed domain name to trade off the goodwill associated with the Complainant is further compelling evidence that the Complainant’s trademarks are strong and deserving of the utmost of protection.
In October 2011, the Complainant announced the next installment in the GTA franchise, “Grand Theft Auto V” (”GTA:V”). The first official trailer for GTA:V was released in November 2011 and a trailer provided on the Internet. The trailer release was covered by mainstream new outlets including the Wall Street Journal, Time Magazine, Huffington Post, and USA Today.
The disputed domain name was registered in January 2012 (for this purpose the Panel has assumed that the “created” date in the WhoIs record corresponds to the registration date for the dispute domain name). The Complainant claims that the disputed domain name was registered on or about May 6, 2012.
There is no direct evidence in the Complaint, or otherwise in the case file, of the use to which the disputed domain name has been put by the Respondent, if any. The Complainant claims that the disputed domain name has been used for a website that falsely suggests it is legitimately connected with the Complainant. The Complainant provides no evidence to support this contention. As at February 25, 2013 when the Panel visited it, the disputed domain name reverts to a “parking” website, on which it is advertised for sale for USD 2,595. The advertisement includes some “quick facts” about the disputed domain name, including that the “Base Domain” is “Gta V Beta”, and that its “Brandability” is at “very high” end of a spectrum.
The facts in this case are closely similar (although not identical) to another Complaint brought by the Complainant, and in which this Panelist is also involved: Take-Two Interactive Software, Inc. v. Mark Meir, WIPO Case No. D2013-0013. Where those cases are similar, the Panel has taken a similar approach.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its registered mark for GTA, because that mark is entirely incorporated in the disputed domain name; the use of the Roman numeral “v” signifies the sequel GTA:V; and the use of the word “beta” indicates a pre-release limited access version of the game. The dominant feature of the mark (and the disputed domain name) is the registered trademark GTA.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent conducts no business associated with the Complainant. The Complainant has not authorized the Respondent to use the GTA mark and the Respondent cannot be said to have legitimately chosen that term unless the Respondent was seeking to create an impression of an association with the Complainant.
The Complainant says that the disputed domain name has been registered and used in bad faith. The Complainant says that the Respondent has acted in bad faith because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant says that the Respondent has improperly registered the disputed domain name to falsely offer a non-existent “beta” version of GTA:V in order to trade on the value of the Complainant’s trademarks and the anticipation surrounding the game. In computer game parlance a “beta” version of a game is a pre-release version that provides early access to a limited number of users for purposes of testing the game. The Complainant has never offered a “beta” version of any game in the Grand Theft Auto series and is not offering any beta version of GTA:V.
The Complainant states that the disputed domain name resolves to a website that uses the Complainant’s copyrighted content and the Complainant’s trademarks replete with a variety of screenshots and images from GTA:V, as well as the Complainant’s distinctive GRAND THEFT AUTO and GTA marks and logos (the Complainant does not provide direct evidence of that site). The Complainant says that the site purports to offer early “beta” access to GTA:V to users who submit personal information, and download what may be a malicious piece of software. The website appears to be a phishing scheme. Phishing has been described as a “form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc. A fake website is created that is similar to that of a legitimate organization . . . and this information is used for identity theft and other nefarious activities.” Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it “has rights” in a trademark. The Complainant has provided copies of registration certificates for its GTA mark on which it relies and so meets this aspect of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to that mark. The disputed domain name is self-evidently not identical to the Complainant’s registered mark. The Complainant argues that the disputed domain name is confusingly similar to its mark as that mark is wholly incorporated in the disputed domain name. In this respect, the disputed domain name starts with the term “gta”, includes the letter “v” as well as the word “beta”. The Complainant points out that the letter “v” is associated with the fifth version of its well-known Grand Theft Auto game. The term “beta” is commonly associated with a trial version of software.
In these circumstances, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s GTA mark. These circumstances mean that an Internet user who is aware of the Complainant’s mark and products could mistakenly believe that there is an association between the disputed domain name and the Complainant’s mark. In somewhat similar circumstances involving a three letter mark (also representing an acronym) and generic words which have an association with the mark, previous UDRP panels have also found confusing similarity: e.g. America Online, Inc. v. Quik-E Inc., WIPO Case No. D2001-1141.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1, for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
Although the Complainant could have provided direct evidence of the use of the disputed domain name, the Complainant has otherwise made a strong prima facie case. The Respondent has submitted no Response, nor made any other communication in connection with this case. There is otherwise no evidence in the case file that suggests the Respondent has rights or legitimate interests in the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances in which bad faith may be found. Each of those circumstances requires, or implies, that a respondent must have known, or ought to have known, of a complainant’s rights, and intended to unfairly take advantage of them.
The Complainant’s Grand Theft Auto product is well-known, of which the Complainant provides evidence. It is likely that the Respondent knew of the Complainant’s GTA mark and its associated products when it registered and then used the disputed domain name. The use of the terms “gta”, “v” and “beta” in the disputed domain name strongly suggest that the Respondent was aware of the GTA V version of the Complainant’s product.
The Complainant claims that the Respondent has used the disputed domain name in connection with “phishing”. The Complainant provides no direct evidence (such as screenshots of the relevant website) for this claim. As such, the Panel has not considered such a use of the disputed domain name. Nevertheless, if the disputed domain name was at one point used in connection with “phishing”, this would be further evidence of registration and use of the disputed domain name in bad faith.
As noted in paragraph 4.5 of the WIPO Overview 2.0, “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name”. As the Complaint did not include evidence about the use of the disputed domain name, the Panel visited it on February 25, 2013. The Panel’s own visit to the disputed domain name indicates a use of the disputed domain name which is highly suggestive of bad faith.
Firstly, the disputed domain name is advertised for sale, for an amount which is, on its face, seemingly well in excess of the costs of registering it. These facts suggest that the Respondent has registered and used the disputed domain name in bad faith. Previous panels have found that attempts to sell a disputed domain name, which is confusingly similar to a complainant’s distinctive mark, through an auction website is indicative of bad faith: AT&T Corp v. rnetworld, WIPO Case No. D2006-0569.
Secondly, the Panel has assumed that the information in the advertisement for the disputed domain name was put there by the Respondent, or at least with the Respondent’s concurrence. This information clearly distinguishes the elements of the disputed domain name which, the Complainant says, reinforce the association with its mark. The advertisement clearly separates the “GTA”, “v” and “Beta” elements of the disputed domain name. That advert also states that the “Brandability” of the disputed domain name is at the “very high” end of a spectrum. This suggests that the Respondent was aware that the disputed domain name has a strong trademark association. The evidence in the case file shows that the disputed domain name has a strong association with the Complainant’s mark. There seems a reasonable inference that this is also what the Respondent had in mind when indicating the “Brandability” of the disputed domain name.
Thirdly, the Respondent has submitted no Response. While not determinative in itself, combined with the other circumstances of this case, the Panel has drawn a negative inference against the Respondent from this failure, under paragraph 14(b) of the Rules.
For these reasons, the Panel finds that the Complainant has established its case 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, <gtavbeta.net>, be transferred to the Complainant.
James A. Barker
Date: February 27, 2013