WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2013-0788
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 Respondents are Above.com Domain Privacy of Beaumaris, Australia / Transure Enterprise Ltd, Host Master of Tortola, British Virgin Islands , United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <gta5free.com> is registered with Above.com, 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 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May, 7 2013.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on May 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 31, 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.
The Panel noted that certain facts alleged in the amended Complaint were not properly supported. The amended Complaint also made reference to an exhibit which was not attached. A Procedural Order No. 1 was issued on July 3, 2013. An extension of time was sought by the Complainant till July 10, 2013, to submit a further amended Complaint to address the issues raised in the Procedural Order. A second amended Complaint was submitted by the Complainant. The Respondents were given till July 13, 2013, to file comments in response to this submission but none were received by the Center.
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 trademarks 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 25, 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 word “free” to indicate that a free, pre-release version of the game is or may be available at the 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 trademarks 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 Respondents have no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorized the Respondents to utilize the GTA trade mark and the Respondents cannot be said to have legitimately chosen that term unless the Respondents were seeking to create an impression of an association with the Complainant.
Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the burden of production shifts to the respondent to come forward with proof that it has rights or legitimate interests 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 Respondents:
Firstly, there is no use in connection with a bona fide offering of goods or services. The Respondents are siphoning off of the Complainant’s fame in order to attract and divert users of the Internet to the Respondents’ own website in order to profit commercially. Specifically, the Respondents are using the Complainant’s GTA mark to draw attention to a site that contains links to numerous other websites, none of which have any relationship with the Complainant, some of which purport to relate to the GRAND THEFT AUTO series of games, and none of which are authorized by the Complainant.
Secondly, the Respondents have not acquired any trademark usage in GTA and is not otherwise commonly known to be affiliated with GTA.
Finally, the Respondents cannot establish that they are 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 Respondents are making of the disputed domain name is to confuse the Complainant’s customers into visiting the Respondent’s website and the other linked sites. The Respondents deliberately chose the disputed domain name to misappropriate and piggyback on the goodwill associated with the Complainant’s well known mark.
(iii) The Respondents have registered and is using the disputed domain name in bad faith
The Respondents have intentionally attempted to attract, for commercial gain, Internet users to their 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 Respondents are deceptively diverting the public to their 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 Complainant’s GTA trade mark, the Respondents clearly intend to capitalize on the initial interest confusion as to source, sponsorship or affiliation of the Respondents’ website.
The Respondents’ bad faith is further demonstrated by their practice of registering domain names that consist of famous trademarks and generic or descriptive terms, and then linking them to websites that offer commercial goods and services of third parties: TRS Quality, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-0630 (“The Panel has found approximately 11 WIPO cases . . . where this Respondent was cited. Transfers were ordered in all instances.”); Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy and Transure Enterprise Ltd, Case No. D2013-0226 (citing the Respondents’ practice of registering domain names that consist of famous trademarks and generic or descriptive terms, and then linking those domain names to websites that offer commercial goods and services of third parties as evidence of bad faith and finding that “Respondents’ use of the famous MICHELIN mark is obviously intended to misleadingly divert consumers”).
Additionally, the Respondents’ bad faith is evidenced by their attempt to confuse Internet users for their own commercial gain by their 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 Respondents did not reply to the Complainant’s contentions.
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 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 word “free”. 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 word “free” is descriptive or suggests that the Complainant is offering a free pre-release 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 domain name in issue.
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 his rights or legitimate interests 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 Respondents have not submitted any evidence of their 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 Respondents do not have rights or legitimate interests in respect of the disputed domain name. This applies notwithstanding a default in response by the Respondents.
There is no evidence that the Complainant has licensed or authorized the use of its GTA trade mark to the Respondents, nor that the Respondents have 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 Respondents or a legitimate noncommercial or fair use.
The Panel therefore concludes that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name.
In the absence of any evidence from the Respondents 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
Paragraph 4(b) of the Policy provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
(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 web site or location or of a product or service on your web site or location.”
The Panel finds that the circumstances of this case show bad faith registration and use, and a deceptive intent by the Respondents to confuse and mislead Internet consumers, through initial interest confusion. The Complainant has shown a “pattern of conduct” on the Respondents’ part in registering domain names incorporating famous marks with generic terms. The circumstances of this case therefore fall within paragraph 4(b)(ii) of the Policy.
The Panel is moreover persuaded, having considered the evidence submitted and circumstances of the case, that the Respondents had been motivated in their choice of the disputed domain name for commercial gain, viz. by using the disputed domain name, they would attempt to “attract, for commercial gain, Internet users to [their] 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 [their] web site or location or of a product or service on [their] web site or location”, by receiving “click-through” commissions. The Respondents’ failure to file a Response in these proceedings and to explain their choice of the disputed domain name which incorporates a well-known mark are factors from which the Panel draws a negative inference.
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 <gta5free.com> be transferred to the Complainant.
Date: July 22, 2013