WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Jamie Stokes
Case No. D2013-0667
1. The Parties
The Complainant is Take-Two Interactive Software, Inc. of New York, New York, United States of America, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
The Respondent is Jamie Stokes of Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <getgta5free.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the 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.
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 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on May 17, 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 owns United States Trademark Registration Numbers 2,148,765 for the mark GRAND THEFT AUTO and 3,439,237 for GTA in connection with computer and video games and related goods and services.
The Domain Name was registered on or about February 15, 2013.
5. Parties’ Contentions
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. The Complainant has produced and continues to produce some of the most popular and best-selling video games of all time.
One of the video game series produced by the Complainant, through its wholly-owned subsidiary, Rockstar Games, Inc., is Grand Theft Auto, which is also known as GTA. The first GTA video game was released in 1998 and, since that time, the series has included GTA London, GTA 2, Grand Theft Auto III, Grand Theft Auto: San Andreas, Grand Theft Auto: Vice City, Grand Theft Auto Iv, Grand Theft Auto: Chinatown Wars, Grand Theft Auto: The Lost And the Damned, and Grand Theft Auto: The Ballad Of Gay Tony. The Complainant owns United States trademark registrations for both GRAND THEFT AUTO and GTA. The Complainant also owns numerous domain names associated with the marks, 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 GRAND THEFT AUTO and GTA 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. Grand Theft Auto is one of the most successful video game series of all time, winning numerous awards for its game design and storyline. In an industry in which the sale of a million units is considered a hit, the success of the GTA series is undeniable. The most recent installment in the series, Grand Theft Auto IV, sold 20 million units alone. To date, over 112 million units of the games in the GTA series have been sold. 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 has also spent tens of millions of dollars on various types of advertising involving the video games marketed and promoted under the GRAND THEFT AUTO and GTA trademarks. The Complainant’s trademarks have also been featured in books, newspapers, magazine articles, radio and television news reports, entertainment programming, and other unsolicited media coverage relating to its video games for over a decade.
In October 2011, the Complainant announced the next installment in the GTA franchise, Grand Theft Auto V, also known as “GTA: V” . The first official trailer for GTA: V was released in November 2011. The trailer release was covered by mainstream new outlets including the Wall Street Journal, Time Magazine, Huffington Post, and USA Today.
The Respondent is using the Domain Name in connection with a website that uses the Complainant’s copyrighted content and trademarks, including the GRAND THEFT AUTO and GTA marks and logos. The site purports to offer early “beta” access, that is, a pre-release version that provides early access to a limited number of users for purposes of testing the game, 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 that is aimed at collecting personal information.
The Complainant argues that the Domain Name is confusingly similar to its GTA trademark, that the Respondent has no legitimate rights to or interests in respect of the Domain Name, and that the Domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the GTA trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (inter alia <leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which uses the GTA trademark with the number “5”, which indicates a version of the Complainant’s GTA video game series, and the words “get” and “free” is confusingly similar to the Complainant’s GTA trademark. See Take-Two Interactive Software, Inc. v. Carl Wright, NA/ Domain Privacy Protector Ltd., WIPO Case No. D2012-2238 (transferring <getgtavbeta.com> to the Complainant).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainants’ prima facie case.
The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name to pass itself off as related to the Complainant for the purposes of misleading Internet users into disclosing personal information. This activity cannot under the circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The content posted on the website associated with the Domain Name demonstrates that the Respondent must have been aware of the Complainant’s GTA trademark, as the site is using the Complainant’s copyrighted artwork and logos, and refers to both of the Complainant’s GRAND THEFT AUTO and GTA trademarks. The Respondent is using the Domain Name to attract Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent since the Respondent is likely using personal information gathered from the visitors to the site for commercial gain. The likelihood of confusion is exacerbated in this case by the prominent use of the Complainant’s logos and copyrighted artwork on the website.
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 <getgta5free.com> be transferred to the Complainant.
Date: May 30, 2013