WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. Jacob Zimerman

Case No. D2013-0489

1. The Parties

Complainant is Take-Two Interactive Software, Inc. of New York, New York, United States of America, represented by Mitchell Silberberg & Knupp LLP, Los Angeles, California, United States of America.

Respondent is Jacob Zimerman of Solon, Ohio, United States of America.

2. The Domain Name and Registrar

The disputed domain name <grandtheftauto5beta.com> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 8, 2013. On March 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2013. Respondent did not submit a formal response, although Respondent sent an e-mail to the Center on March 19, 2013, as detailed below. Accordingly, the Center notified the parties of the commencement of the panel appointment process on April 5, 2013.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 16, 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

Complainant states that it is “one of the world’s most famous and successful video game developers and publishers and has produced and continues to produce some of the most popular and best-selling video games of all time,” including the “video game series” known as “Grand Theft Auto,” the first version of which was released in 1998. Complainant further states that its Grand Theft Auto series of video games have won “numerous awards for their game design and storyline” and have sold 112 million units, including 20 million units of the most recent installment in the series, Grand Theft Auto IV.

Complainant states, and provides evidence to support, that it is the registrant of United States of America Reg. No. 2,148,765 for the word mark GRAND THEFT AUTO (registered on April 7, 1998, with a priority date of March 16, 1996) for use in connection with, inter alia, “video game software.” (This registration is hereafter referred to as the “Grand Theft Auto Trademark.”) Complainant further states, and provides evidence to support, that its wholly owned subsidiary Rockstar Games is the registrant of a number of domain names containing the Grand Theft Auto Trademark, including <grandtheftauto.com>.

Complainant states that the website associated with the Disputed Domain Name “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 Infringing Website appears to be a phishing scheme.” (However, these statements are unsupported by any evidence in the record, and the Panel’s own review indicates that the Disputed Domain Name apparently is not being used in connection with an active website.¹)

The Disputed Domain Name was created on January 13, 2013.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights. The inclusion of the number “5” and the word “beta” to the Disputed Domain Name, in addition to the Grand Theft Auto Trademark, are “slight distinctions [that] do not add any significant element and do not change the overall impression of the mark and are thus insufficient to escape a finding that the domain name is confusingly similar.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not authorized Respondent to utilize the [Grand Theft Auto] name”; “Respondent is using Complainant’s mark to generate revenue and attempting to collect personal information by falsely offering a ‘leaked’ beta version of Complainant’s GTA: V video game (which does not yet exist for public use) via Respondent’s website”; and “Respondent has not acquired any trademark usage in Complainant’s name and is not otherwise commonly known to be affiliated with [Grand Theft Auto].”

- Respondent registered and is using the Disputed Domain Name in bad faith because “Respondent is deceptively diverting the public to Respondent’s website in order to benefit commercially by improperly capitalizing on the fame of GTA and by siphoning Complainant’s valuable goodwill”; “Respondent is clearly attempting to confuse Internet users for Respondent’s own commercial gain (including through phishing)”; Respondent has “attempt[ed] to foreclose Complainant from promoting its products on the Internet.”

B. Respondent

Respondent did not reply to Complainant’s contentions. However, on March 19, 2013, Respondent sent an e-mail to the Center stating, in full: “I dont [sic] use this website, I sold it to someone but kept it under my name, how can I get rid of it. I do not want this to go any further.”

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant it is apparent that Complainant has rights in and to the GRAND THEFT AUTO Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the GRAND THEFT AUTO Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “grandtheftauto5beta”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

The Panel agrees with Complainant that the addition of the number “5” and the word “beta” to the Disputed Domain Name does nothing to avoid confusing similarity – especially because the most current version of Complainant’s Grand Theft Auto series of video games is “Grand Theft Auto IV” and because the word “beta” is a well-known indication of an early, pre-release version of software. Thus, these additions actually increase the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017 (finding the domain name <gucci-jewelry.com> confusingly similar to the trademark GUCCI).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, “Complainant has not authorized Respondent to utilize the [Grand Theft Auto] name”; “Respondent is using Complainant’s mark to generate revenue and attempting to collect personal information by falsely offering a ‘leaked’ beta version of Complainant’s GTA: V video game (which does not yet exist for public use) via Respondent’s website”; and “Respondent has not acquired any trademark usage in Complainant’s name and is not otherwise commonly known to be affiliated with [Grand Theft Auto].”

Under 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary,² the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Here, Complainant has alleged specifically that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy given Complainant’s allegations that the Disputed Domain Name has been used “to offer early ‘beta’ access to GTA: V to users who submit personal information, and download what may be a malicious piece of software.” If true,³ the Panel has no hesitation in finding that such use constitutes bad faith. See, e.g., gamigo AG v. Wang Meng, WIPO Case No. D2011-1659 (finding bad faith where “[t]he Complainant alleges that the Respondent is using this Domain Name for software piracy”); and Take-Two Interactive Software, Inc. v. Chris Rivers, WIPO Case No. D2013-0014 (finding bad faith where “Respondent offer[ed] a beta key to a product that is not lawfully available”).

Accordingly, the Panel finds that Complainant has proven 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 <grandtheftauto5beta.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: April 28, 2013

¹ “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…” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.

² Although, as noted above, the record contains no evidence, such as a screenshot, to support Complainant’s description of the website associated with the Disputed Domain Name, and, further, the Panel cannot independently confirm Complainant’s description, the Panel is prepared to accept this description as accurate given the absence of any contradiction from Respondent.

³ See footnote 2, supra.