WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Bibek Kumar Shah
Case No. D2013-0789
1. The Parties
The Complainant is Take-Two Interactive Software, Inc. of New York, United States of America represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
The Respondent is Bibek Kumar Shah of Copenhagen, Denmark and Kongsvinger, Norway.
2. The Domain Name and Registrar
The disputed domain name <gtavbetakey.com> is registered with Ascio Technologies 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 13, 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 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on June 10, 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 develops and publishes computer games. It is the legal owner of a United States trademark registration for GTA, no. 3439237, which was registered on June 3, 2008 and a United States trademark registration for GRAND THEFT AUTO, no. 2148765, which was registered on April 7, 1998. The Complainant’s wholly owned subsidiary, Rockstar Games owns numerous domain names relating to the GRAND THEFT AUTO series including <gta4.com>. The disputed domain name was registered on March 6, 2013.
5. Parties’ Contentions
This section consists of a summary of the Complainant’s submissions with which the Panel may or may not agree.
The Complainant’s trademarks are widely recognized throughout the world by fans and consumers of the Complainant’s Grand Theft Auto video games. In October 2011, the Complainant announced the next installment in this franchise, Grand Theft Auto V, known also as “GTAV”.
The apparent purpose of the registration of the disputed domain name is to falsely offer a non-existent official beta version of GTAV. A beta version of a computer game is a pre-release version that provides early access to a limited number of users for the purposes of testing the game. The Complainant does not offer beta versions of any game in the GTA series.
The only differences between the Complainant’s name and the disputed domain name are the use the Roman numeral “V” to represent the sequence number of the current game and the use of the words “beta” and “keys” to indicate a pre-release limited access version of the game and that some sort of “keys” to unlock the purported “beta” version might be available at the infringing domain.
The Complainant has been using the name GRAND THEFT AUTO for fifteen years prior to the registration date of the disputed domain name.
The Complainant has not authorized the Respondent to utilize the GTA name 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 disputed domain name does not currently resolve to any active website. The only use that the Respondent is making of the dispute domain name is to confuse the Complainant’s customers into visiting the Respondent’s website by claiming falsely to be able to deliver a beta version of the GTA V in order to generate revenue or improperly collect personal information from the Complainant’s customers. The Respondent’s bad faith is also evidenced by the Respondent’s calculated attempt to foreclose the Complainant from promoting its products on the Internet.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark GTA and the letters “vbetakey”. These eight letters have no logical meaning as a single word. In the absence of a response or any ordinary meaning to these letters, the Panel has to accept that what they really signify is “V” representing the series of video game, “beta” for a trial version and “key” as a means of access to such a product. On this basis, the Panel accepts that for an enthusiast of computer games, the disputed domain name is confusingly similar to the Complainant’s trademark. For those not familiar with the Complainant’s products, the disputed domain name is probably just confusing but that is arguably the case with all cases concerning trademarks that are only household names in certain households. The confusing similarity test is supposed to be a relatively low threshold test. As paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says on this point:
“Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).”
Here the relied upon name is not a common term or phrase, itself contained or subsumed within another such term or phrase in the domain name. It stands separately at the beginning of the disputed domain name.
The Panel in Take-Two Interactive Software, Inc. v. Carl Wright, WIPO Case No. D2012-2238 said in connection with <getgtavbeta.com>:
“The disputed domain name wholly incorporates the Complainant’s GTA mark together with the words ‘get’ and ‘beta and the letter ‘v’. The Complainant submits that this is intended to suggest to Internet users the concept of obtaining a “beta” or testing version of the latest GTA game. The Panel accepts that that the Complainant’s interpretation of the disputed domain name seems to be the most likely one and that none of the other elements of the disputed domain name are distinctive to the extent that they distinguish the disputed domain name from the Complainant’s GTA mark. In these circumstances and considering the substantial degree of renown attaching to the Complainant’s GTA mark, the Panel finds that the overall impression of the disputed domain name in this case concerns the Complainant’s GTA mark and that in these circumstances the disputed domain name is confusingly similar to the Complainant’s GTA registered mark.”
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark, GTA.
B. Rights or Legitimate Interests
The Respondent is not called “GTAVBETAKEY” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The expected launch of Grand Theft Auto V, commonly known as GTA V was officially announced in 2011 and is due to be released in autumn 2013. The Complainant’s uncontroverted evidence that “betakey” suggests to users that the website to which the disputed domain name resolves offers access to a “beta” version of the new game suggests that the Respondent knew of the Complainant’s business and trademark and registered the disputed domain name to take advantage of it. The Complainant’s explanation is the only cogent one available to the Panel.
In this Panel’s view, it is impossible, at least without a full Response to the Complaint, to identify any other reason why the Respondent registered the disputed domain name except to benefit in some way from the Complainant’s trademark. The only explanation of what has happened seems to be that the Respondent’s motive in registering the disputed domain name was either to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.
The Respondent has not put any content on the website to which the disputed domain name resolves. However, the act of retaining a domain name without any right or legitimate interest in doing so, knowing that it replicates some else’s trademark and thus prevents that other person from exploiting the name, can be considered use in bad faith in circumstances such as the present one.
For all these reasons, the Panel concludes that the Respondent registered and is using 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 <gtavbetakey.com> be transferred to the Complainant.
Date: June 21, 2013