WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Fundacion Private Whois
Case No. D2013-0586
1. The Parties
The Complainant is Take-Two Interactive Software, Inc. of Los Angeles, California, United States of America, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <gta5download.org> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 2, 2013. On April 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 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 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 April 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2013.
The Center appointed William P. Knight as the sole panelist in this matter on May 3, 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 is an American corporation that has, through a wholly-owned subsidiary, established a worldwide reputation for its popular series of video games called “Grand Theft Auto”, abbreviated to “GTA”, in which four versions have been published, and the fifth has been announced to be published in the near future. The Complainant is the owner of the registered trademark “GTA” in a number of countries. The Complainant’s subsidiary, Rockstar Games Inc., also owns numerous domain names that relate to the Grand Theft Auto series, including <gta5.com>.
The Domain Name was created on November 2, 2012. The Respondent by its name purports to be a privacy service based in Panama. The website under the Domain Name (the “Website”) was active on the date of the filing of the Complaint but has subsequently ceased to be available under the Domain Name. Until recently, the Website purported to offer what it described as a ‘beta version’ of the unpublished fifth version in the GTA series, referred to as “GTA5”. The download was offered upon entering a ‘Beta key’ that was said to be retrievable by providing the website with referrals or completing an offer or survey, including the provision of personal information.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its trademark GTA, notwithstanding the inclusion of the additional number “5” and word “download”. It is contended that both of these additions are generic words that are not sufficient to render the Domain Name distinct from the GTA trademark. The Complainant also claims an independent reputation and goodwill in the sign “GTA5”, notwithstanding that the fifth version of Grand Theft Auto has not yet been offered to the public.
The Complainant states that it has not authorized the use of the Domain Name by the Respondent. The Complainant further states that the beta version of the game does not exist and speculates that the Website exists solely to collect users’ personal information for exploitation in some manner but no supporting evidence has been provided for this proposition.
The Complainant contends that the Respondent has intentionally created a likelihood of confusion with the GTA trademark in order to attract Internet users for commercial gain. The Complainant argues that the Respondent clearly intends to capitalize on confusion as to the source, sponsorship or affiliation of the Respondent’s website. Additionally, the Complainant claims that the Respondent has made a calculated attempt to disrupt the promotion of the Complainant’s products on the Internet.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).
A. Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in GTA for the purposes of the Policy. The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s GTA trademark. The Panel is satisfied that the dominant component of the Domain Name is the letters “gta”, which has gained a significant reputation in the field of video games and related products. The numeral “5” is simply understood as a denominator of the fifth version of the Complainant’s product, as is apparent from the Respondent’s use of it alone, as well as the use of it by the Complainant’s subsidiary. The word “download” and the top-level domain “.org” in the Domain Name do not carry any distinguishing weight.
The first element of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent was certainly aware of the Complainant’s established reputation and trademark rights at the time of registering the Domain Name, since the Respondent was using the Domain Name specifically to refer the fifth version of the Grand Theft Auto game. In the absence of any explanation to the contrary by the Respondent, the Panel also accepts that the Respondent has not been granted authorization from the Complainant to use its GTA trademark in the Domain Name.
It would be a legitimate use of a Complainant’s trademark to offer the genuine goods of the Complainant, as does a reseller or distributor, in the circumstances set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, in this case, in the absence of any investigation by and evidence from the Complainant to explain definitively what the Respondent was doing, the Panel discerns only the following possibilities:
(a) the Respondent is offering the genuine Grand Theft Auto version 5 software, presumably a beta version, notwithstanding the Complainant’s denial of its existence. If so, however, the making available of a copy for download would plainly be a copyright infringement in nearly all, if not all, countries in the world and this could never amount to a legitimate interest in the Domain Name incorporating the Complainant’s trademark for purposes of the Policy;
(b) the Respondent is offering something other than Grand Theft Auto version 5, in which case such deceit equally could not amount to a legitimate interest in the Domain Name incorporating the Complainant’s trademark;
(c) the Respondent is doing something else, perhaps dishonestly collecting personal information for spamming or some other purpose, as the Complainant speculates, which is also not a legitimate use of the Domain Name incorporating the Complainant’s trademark.
In the circumstances, the Panel therefore concludes that the Respondent does not have rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. The Complainant has sought to rely predominately on paragraph 4(b)(iv), as well as on paragraph 4(b)(iii). Although the Complainant has not provided direct evidence of the Respondent’s actual use of the Domain Name, an illegitimate purpose can be assumed for the reasons set out in the previous section concerning legitimate interest. As such, a formal conclusion as to the Respondent’s exact purpose is not required. The Panel is prepared to conclude that the Respondent registered and has used the Domain Name in bad faith.
The Domain Name is not currently in use. However, the Respondent’s past conduct indicates that it could do nothing legitimate with the Domain Name and a finding of current use in bad faith is justified.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gta5download.org> be transferred to the Complainant.
William P. Knight
Date: May 17, 2013