WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. David David
Case No. D2013-0785
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 David David of Hyderabad, India.
2. The Domain Name and Registrar
The disputed domain name <gta5betagiveaway.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 May 2, 2013. On May 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 May 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on June 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 is a global leader in the development, marketing and publishing of interactive entertainment for consumers. Among other products, it 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 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.
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 GTA video game was released in 1998 and, since that time, the series has included GTA LONDON, GTA2, GRAND THEFT AUTO III, GRAND THEFT AUTO: SAN ANDREAS, GRAND THEFT AUTO: VICE CITY, GRAND THEFT AUTO IV, GRAND THEFT AUTO: CHINATOWN WARS, etc. The GRAND THEFT AUTO series is distinguished by complex narratives that unfold in large virtual worlds depicting complex urban environments and all that accompanies them – politics, entertainment, race relations, and other subjects. They are interactive movies, in which the player is in the role of the main character and can influence the outcomes of the story. Each game has its own unique storyline with original characters. The main narrative of the most recent game – GRAND THEFT AUTO IV – takes about 30 hours to play through. In addition to the main narrative, there are more than 70 hours of secondary story and activity material that the user may play through.
The Complainant is the owner of the federally registered trademark GRAND THEFT AUTO (and design) (Registration 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; and the federally registered trademark GTA (Registration 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. Rockstar Games, owns numerous domain names related to the GRAND THEFT AUTO series, including <grandtheftauto.com>, <gta2.com>, <gta4.com>, <gta5.com>, <grandtheftauto3.com>, <grandtheftautosanandreas.com>, <gtachinatownwars.com>, <gtavicecity.com>, <grandtheftauto4.com>, <grandtheftautoiv.com>, <gtaiv.com>, and <grandtheftautov.com>.
GRAND THEFT AUTO is one of the most successful video game series, having won numerous awards for their game design and storyline. The most recent installment in the series GRAND THEFT AUTO IV alone sold 20 million units. As at the time of filing of the Complaint, over 112 million units of the games in the GTA series have been sold. Since 1998, the GRAND THEFT AUTO and GTA trade marks have been used extensively around the world on television, the Internet, in magazines, and in various other media. Tens of millions of dollars have been spent on various types of advertising involving the video games marketed and promoted under the GRAND THEFT AUTO and GTA trademarks. The GRAND THEFT AUTO and GTA trademarks are therefore well known marks and widely recognized throughout the United States and the world by millions of fans and consumers alike as being associated with the Complainant.
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. The trailer release was covered by mainstream new outlets including the Wall Street Journal, Time Magazine, Huffington Post, and USA Today. GTA: V is one of the most anticipated games in the world.
The disputed domain name was registered on March 24, 2013 without the Complainant’s authorization or permission.
5. Parties’ Contentions
(i) The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The disputed domain name incorporates the entirety of the Complainant’s GTA trade mark. The only differences between the Complainant’s trade mark and the disputed domain name are (i) the use of the number 5 (to signify the sequel GTA: V), and (ii) the use of the words “beta” and “giveaway” to indicate that a pre-release limited access version of the game is or may be given away at the disputed domain name. It has been consistently held that these sorts of slight distinctions 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. That GTA: V is not yet itself a registered trademark is of no import. The suffix “V” simply denotes the sequel’s number (following 2008’s GTA IV). The dominant feature of the disputed domain name is the registered trade mark, GTA. Neither is it relevant that the Respondent has added additional terms to the Complainant’s GTA mark as they are generic in nature and to not change the overall impression of the designation as being connected to the GTA trade mark of the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorized the Respondent to utilize the GTA trade 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 Respondent appears to be an individual or entity located in India. The Respondent does not conduct any business associated with the Complainant and since there is no such authorized association, the Respondent’s interests in the disputed domain name cannot be legitimate.
Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the burden shifts to the respondent to come forward with proof that it has some legitimate interest in the domain name to rebut the presumption. However, here, none of the safe harbour provisions of paragraph 4(c) of the Policy applies to the Respondent:
Firstly, there is no use in connection with a bona fide offering of goods or services. The Respondent is siphoning off of the Complainant’s fame in order to attract and divert users of the Internet to the Respondent’s own website in order to profit commercially. Specifically, the Respondent is using the Complainant’s GTA mark to generate revenue by attempting to collect personal information by falsely offering a beta version of Complainant’s GTA: V video game (which does not yet exist for public use) via the Respondent’s website. The disputed domain name resolves to a website that uses the Complainant’s 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 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 Respondent’s infringing website appears to be a phishing scheme. Such activity is not use in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
Secondly, the Respondent has not acquired any trademark usage in GTA and is not otherwise commonly known to be affiliated with GTA.
Finally, the Respondent cannot establish that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers. To the contrary, the only use that the Respondent is making of the disputed domain name is to confuse the Complainant’s customers into visiting the Respondent’s website, with a false claim to be able to deliver a “beta version” of the Complainant’s upcoming video game GTA: V (viz. 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 Respondent deliberately chose the disputed domain name to misappropriate and piggyback on the goodwill associated with the Complainant’s well-known mark and to generate revenue therefrom, or to improperly collect personal information from the Complainant’s customers.
(iii) The Respondent has registered and is using the disputed domain name in bad faith.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s GTA trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent is deceptively diverting the public to its website in order to benefit commercially by improperly capitalizing on the fame of the GTA trade mark and by siphoning the Complainant’s valuable goodwill. By using the entirety of the Complainant’s GTA trade mark, the Respondent clearly intends to capitalize on the initial interest confusion as to source, sponsorship or affiliation of the Respondent’s website.
The Respondent’s bad faith is evidenced by its attempt to confuse Internet users for its own commercial gain through phishing and by its calculated attempt to foreclose the Complainant from promoting its products on the Internet. This willful misappropriation of the exclusive property of the Complainant is disruptive to its business and curtails the Complainant’s right to exploit the value of its trade mark on the Internet.
The Respondent’s active steps to conceal his/her/its true identity, by registering under the name “null” or “david, david,” and provision of apparently false contact details are further evidence of registration and use in bad faith.
The Respondent did not file a Response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark 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 registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights to the GTA trade mark.
As to whether the disputed domain name is confusingly similar to the GTA trade mark, the Panel is of the view that it is and agrees with the submissions made by the Complainant. The GTA trade mark has not only been registered but has gained a well-known status which renders the disputed domain name confusingly similar thereto, notwithstanding the length of the additional elements in the disputed domain name, comprising the numeral “5” and the words “betagiveaway”. The disputed domain name incorporates the famous GTA trade mark which is the distinctive portion of the disputed domain name. The additional elements in the disputed domain name do not serve to avoid similarity or to remove the confusing similarity as “gta5” suggests to Internet users that the Respondent’s website to which the disputed domain name resolves relates to the well-known GTA trade mark and the latest installment in the highly-popular series of GTA video games, the GRAND THEFT AUTO IV release alone having sold 20 million units. The words “betagiveaway” are descriptive or suggest that the Complainant is offering a pre-release beta version of the game. Prior UDRP panel decisions support this view, namely that the adding of generic or common expressions is not sufficient to avoid a finding of confusing similarity. All the more so where a well-known trademark is clearly identifiable within the disputed domain name and the generic words correspond to the type of goods or services associated with the trade mark.
The Complainant has therefore satisfied the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out examples of circumstances which, if established by a respondent, can demonstrate its right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name 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.
The Respondent has not submitted any evidence of its rights or legitimate interests in the disputed domain name. The Panel is thus left to consider the submissions made by the Complainant. As correctly noted by the Complainant, the Complainant has to establish a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. This applies notwithstanding a default in response by the Respondent.
There is no evidence that the Complainant has licensed or authorized the use of its GTA trade mark to the Respondent, nor that the Respondent has been commonly known by the disputed domain name. Further, the circumstances in this case do not show a bona fide offering of goods or services by the Respondent. The Panel therefore concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
In the absence of any evidence from the Respondent which would suggest otherwise, the Complainant has satisfied the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the circumstances of this case show clear bad faith registration and use, and a deceptive intent by the Respondent to confuse and mislead Internet users, through initial interest confusion and through apparent phishing activities. The screen shot of the Respondent’s website submitted by the Complainant in evidence reflected, inter alia, the following text:
“Grand Theft Auto V Beta version is now available for download!
Grand Theft Auto V (GTA 5) is one of the most anticipated games of the coming year. Set to be released in spring 2013 officially. The game has already started releasing out beta access to very few selected beta testers who were involved in GTA IV. Though no official or leaked version has been released by anyone yet, we have finally decided to let gamers have a piece of this game for themselves.
Over the last few week we have been flooded with mails asking us to get them into the beta testing. Though Rockstar Games are very strict when rolling out the beta and this is the reason there has been very strict monitoring of the game leaks during testing. But now we have finally decided to release the beta for the public. But rest assured the game won’t get saturated before the release. We are going to only be releasing limited number of beta.
Here at gta5betagiveaway.net we are the first ever group in the internet to officially release the full beta version of the game with online gameplay access on the beta test servers. Just goto the bottom of the page to get your beta key and start downloading the game. We have both torrent download and direct download with many mirror. We even have our own ftp mirror for high speed downloads. The download is the GTA V PC Version. So what are you waiting for? Start downloading and join in on the fun.”
In this Panel’s view it would not be inconceivable that Internet users reaching the Respondent’s website would believe that it is somehow associated with, or endorsed by the Complainant. The graphics, text and look of the website are clearly intended to communicate to Internet users that the Respondent is associated with or endorsed by the Complainant. It is also clear that the Respondent was well aware of the Complainant, and of its well-known GTA and GRAND THEFT AUTO trade marks.
The Panel also draws a negative inference from the fact that the Respondent furnished false information concerning its contact information. The Written Notice that the Center sought to send by courier service to the Respondent could not be delivered as the address furnished was obviously a fictitious address. The address given by the Respondent identified India’s capital city, New Delhi, whilst also identifying the Indian city or district of Hyderabad and state of Andhra Pradesh which are located in another distant part of India, south of New Delhi.
The Panel is of the view that there has been improper use of the Complainant’s GTA and GRAND THEFT AUTO trade marks by the Respondent, and is persuaded, having considered the evidence submitted and circumstances of the case, that the Respondent had, by using the disputed domain name, “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location” as per paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has satisfied the third limb of paragraph 4(a) 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 <gta5betagiveaway.net> be transferred to the Complainant.
Date: June 30, 2013