WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Vyacheslav Grubin
Case No. D2013-0661
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 Vyacheslav Grubin, Lomonosov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <gta5beta.net> is registered with LLC REGISTRAR OF DOMAIN NAMES REG.RU (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 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.
On April 23, 2013, the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or submit the Complaint translated into Russian, or submit a request for English to be the language of the administrative proceedings. On May 1, 2013 the Complainant submitted a copy of the Complaint in Russian. No response was received from the Respondent.
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 May 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2013.
The Center appointed Assen Alexiev as the sole panelist in this matter on June 11, 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.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
All evidence submitted by the Complainant and relevant to the dispute is in the English language. The website associated to the disputed domain name is in English, and is made to appear as an official website of the Complainant. It includes the Complainant’s official trailers for its Grand Theft Auto V Beta game, and contains announcements such as: “Grand Theft Auto V Beta version is now available for download!”. This evidence is central to the resolution of the dispute, and shows that the Respondent has good knowledge of the English language. According to the courier service used by the Center for the postal delivery of documents to the Respondent, the Respondent is unknown at the physical address listed in the WhoIs and the provided phone number is wrong. In view of this, the actual physical address and nationality of the Respondent are unknown.
At the same time, the Complainant has submitted its Complaint in both English and Russian, and the Center has sent its messages regarding the language of the proceedings to the Respondent in both languages. The Notification of Complaint and the Notification of Respondent Default were sent in the Russian language. The Respondent was thus given a fair opportunity to get acquainted with the case and to present his position. The Respondent however chose not to express any position in respect of the language of the proceedings and not to submit a Response.
In view of the above, the Panel is not aware of any circumstances that would put the Respondent in a disadvantage if the proceeding is held in English, and accepts that the use of the English language in this proceeding will be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
4. Factual Background
The Complainant is a corporation that develops and markets interactive entertainment for consumers. 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 first video game of this series was released in 1998. The Complainant has sold 20 million units of the most recent installment in the series GRAND THEFT AUTO IV, and has sold over 112 million units of the whole GTA series. In October 2011, the Complainant announced the latest version of the series - GRAND THEFT AUTO V (“GTA: V”). The first official trailer for GTA: V was released in November 2011.
The Complainant is the owner of the GRAND THEFT AUTO word trademark with Reg. No. 2,148,765, registered on April 7, 1998 for the territory of the United States of America for goods in International Classes 09 and 16. It is also the owner of the GTA word trademark with Reg. No. 3,439,237, registered on June 3, 2008 for the territory of the United States of America for goods and services in International Classes 09 and 41.
The Complainant’s wholly-owned subsidiary Rockstar Games owns numerous domain names related to the GRAND THEFT AUTO product series, including <grandtheftauto.com>, <gta2.com>, <grandtheftauto3.com>, <grandtheftautosanandreas.com>, <gtachinatownwars.com>, <gtavicecity.com>, <grandtheftauto4.com>, <grandtheftautoiv.com>, <gtaiv.com>, <gta4.com>, <grandtheftautov.com>, and <gta5.com>.
The disputed domain name was registered on March 9, 2013.
5. Parties’ Contentions
The Complainant submits that the Respondent has registered a domain name that is confusingly similar to a trademark in which the Complainant has rights. Since 1998, the GRAND THEFT AUTO and GTA trademarks have been used extensively around the world on television, the Internet, in magazines, and in various other media. The Complainant enjoys a valuable reputation as a result of extensive sales and advertising of its GTA products. As a result, the public recognizes the GRAND THEFT AUTO and GTA names and associates them with the Complainant.
The Complainant further states that the disputed domain name incorporates the entirety of the Complainant’s GTA trademark. The only differences between Complainant’s trademark and the disputed domain name are the number “5” and the word “beta”, which indicate the version of the game and that it is a pre-release limited access version of the game. These slight distinctions do not add any significant element and do not change the overall impression of the designation as being connected to the trademark of the Complainant. It is a well-established principle that adding generic or common expressions is not sufficient to escape the finding of confusing similarity.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with, and is not sponsored by the Complainant. At no time has Complainant assigned, granted, licensed, sold, authorized or otherwise agreed to the use of the GTA trademark by the Respondent, and has not authorized the Respondent to offer any content related to the Complainant’s GTA: V game. The Respondent conducts no business associated with the Complainant. Rather, the Respondent has improperly registered the disputed domain name to falsely offer a non-existent “leaked”, “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.
In the Complainant’s submission, the Respondent is not commonly known to be affiliated with the Complainant or its products, and is not making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers. The Respondent is illegitimately seeking to create an impression of an association with the Complainant, and is exploiting the Complainant’s popularity in order to attract and divert users of the Internet to the Respondent’s website in order to profit commercially. The disputed domain name resolves to a website that uses the Complainant’s copyrighted content and Complainant’s trademarks and features screenshots and images from GTA: V, as well as Complainant’s GRAND THEFT AUTO and GTA marks and logos. The Respondent has thus created a phishing scheme to collect personal information and generate revenue by falsely offering a “leaked” beta version of Complainant’s GTA: V video game, which does not yet exist for public use.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. He has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent is deceptively diverting the public to his website in order to benefit commercially, including through phishing, by improperly capitalizing on the fame of the GTA trademark and by exploiting the Complainant’s goodwill.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a) the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its trademark rights in the GTA trademark.
It is a common practice under the Policy to disregard the generic top-level domains (“gTLD”) such as the “.net” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is “gta5beta”. This alphanumeric string represents a combination of the word elements “gta” and “beta”, separated by the numeral “5”. The “gta” element is identical to the Complainant’s GTA trademark, and is the most prominent element in the disputed domain name, which makes it likely to be associated with the Complainant’s GTA trademark and product. The numeral “5” and the word element “beta” are generic and descriptive. The first of them is likely to be regarded by Internet users as denoting the fifth version of “gta”, while the term “beta” may be understood as signifying a so-called “beta" pre-release version of the same product. Rather than distinguishing the disputed domain name from the Complainant’s GTA trademark, the additional elements are more likely to suggest a connection with the Complainant’s product.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the GTA trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating numerous arguments in support of this contention, as described in section 5 above. Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any arguments in his defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the acquisition and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) is present in his favor.
Apart from the factual contentions of the Complainant, the only other sources of information about Respondent are the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain name. The WhoIs information contains no evidence that the Respondent is commonly known by the disputed domain name. The disputed domain name is confusingly similar to the GTA trademark of the Complainant, and the website linked to it copies the Complainant’s product advertisements. It also offers for download what is described as a “beta” version of a purported fifth release of the Complainant’s Grand Theft Auto video game, though no such release has been published yet according to the Complainant. Internet users who are interested to download this purported “beta” version have to submit their personal details to do so. Therefore, the website at the disputed domain name appears to be a so-called “phishing” website that collects personal information by misleading Internet users.
It is clear that such use cannot give rise to rights or legitimate interests in the disputed domain name. Therefore, the Panel accepts that the Complainant’s prima facie case has not been rebutted, and finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The content of the website at the disputed domain name makes it clear that the Respondent was positively aware of the Complainant and its products at the time of the registration of the disputed domain name, which is confusingly similar to the GTA trademark. The Respondent has not shown any rights or legitimate interests in the disputed domain name. As contended by the Complainant and not denied by the Respondent, the disputed domain name resolves to a website that uses the Complainant’s advertising content and features the Complainant’s GRAND THEFT AUTO and GTA trademarks and logos, as well as images taken from the advertisements of the Complainant’s products. The website purports to offer early “beta” access to the Complainant’s product to users who submit personal information. Taken together, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s GTA trademark as to the source, sponsorship, affiliation, or endorsement of the same website or of the product offered on it. This supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b)(iv).
Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
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 <gta5beta.net> be transferred to the Complainant.
Date: July 2, 2013