WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Richard Schuring / WhoisGuard.com, Inc.
Case No. D2013-0955
1. The Parties
Complainant is Take-Two Interactive Software, Inc. of Los Angeles, California, United States of America, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
Respondent is Richard Schuring / WhoisGuard.com, Inc., of Gelderland, Netherlands, and Los Angeles, California, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <gta5betacodes.info> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2013. On May 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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 Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 5, 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2013.
Respondent has sent email communications to the Center on June 10, 11, 12, 13, 18, 20, 2013, indicating its willingness to transfer the disputed domain name to Complainant. Complainant confirmed its intention to continue with the proceeding without exploring any possible settlement with Respondent.
The Center notified the Parties that the proceeding would continue on June 28, 2013.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on July 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
Complainant, Take-Two Interactive Software, Inc. is a global company in the development, marketing and publishing of interactive entertainment for consumers. Among other products, one of the video game series produced by Complainant, through its wholly-owned subsidiary, Rockstar Games, Inc., is Grand Theft Auto or GTA. 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. In October 2011, Complainant announced the next installment in the GTA® franchise, Grand Theft Auto V (“GTA:V”).
Complainant is the sole and exclusive owner of the federally registered trademark GRAND THEFT AUTO (Reg. 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. Complainant is also the sole and exclusive owner of the federally registered trademark GTA (Reg. 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.
The GRAND THEFT AUTO and GTA trademarks are distinctive and famous and are widely recognized throughout the United States and the World.
The disputed domain name was registered on April 3, 2013.
5. Parties’ Contentions
With respect to the first element, Complainant states that the disputed domain name registered by Respondent incorporates the entirety of Complainant’s trademark GTA. The only differences between Complainant’s name 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 “codes” to indicate that codes to access a pre-release limited access version of the game is or may be available at the disputed domain name.
Besides, Complainant considers 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 disputed domain name is confusingly similar.
That GTA: V is not yet itself a registered trademark is of no importance. The suffix “V” simply denotes the sequel’s number (following 2008’s GTA IV). The dominant feature of the mark (and the disputed domain name) is the registered trademark GTA. It is also well-established that under the Policy, “it is sufficient that the Complainant . . . has rights in [a] common law trademark or sufficient rights to ground an action for passing off”, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.
In reference to the second element, Complainants alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to utilize the GTA name and Respondent cannot be said to have legitimately chosen that term unless Respondent was seeking to create an impression of an association with Complainant. Since there is no such authorized association, Respondent’s interests in the disputed domain name cannot be legitimate.
Further, there is no use in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i) and Respondent has not acquired any trademark usage in Complainant’s GTA name and is not otherwise commonly known to be affiliated with Complainant. Policy, paragraph 4(c)(ii).
Finally, Respondent has acted in bad faith because Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Thus, Respondent is deceptively diverting the public to Respondent’s website in order to benefit commercially by improperly capitalizing on the fame of GTA and by siphoning Complainant’s valuable goodwill. Indeed, by using the entirety of Complainant’s trademark GTA, Respondent clearly intends to capitalize on the initial interest confusion as to source, sponsorship or affiliation of Respondent’s website.
Respondent did not reply to Complainant’s contentions. Nevetheless, through various emails sent to the Center the Panel will summarize his position.
Respondent alleges not to have been aware that it infringed a copyright right since he had bought both the disputed domain name and the content from a third party. Otherwise he would not have purchased nor used the content.
He also stated that he had given instructions to his website provider to suspend the site but in doing so, he instructed the provider not to take down completely, in order to keep the material available in case of a hearing.
In a later email Respondent expressed his intention to transfer the disputed domain name.
A latter email, allegedly sent by Respondent’s mother, insisted on the absence of bad faith of his son and looked forward for an amicable settlement of the dispute since Respondent was a teenager who trusted an online “friend”, so all this had been an inmature and unfortunate action which he regrets.
On June 20, 2013 Respondent sent an email to the Center stating that “I am fully willing to cooperate and transfer the domain voluntarily”. No further communications has been received.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to Complainant under the Policy it is necessary that Complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
The fact that Respondent has not provided a formal Response to the Complaint does not relieve Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary ‑Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro ‑Life Domain, Inc., WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal WIPO Case No. D2006-1637).
Finally, Respondent’s offer to an amicable agreement has not been accepted by Complainant who doesn’t wish to a consent decision and is entitled to the decision for which it has paid in filing its complaint (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ["WIPO Overview 2.0"], paragraph 4.13).
A. Identical or Confusingly Similar
Complainant has made continuous use of its registered and incontestable marks where “gta” appears to be a distinctive element and has spent much time, money and effort promoting the mark and has established significant good will.
Previous UDRP panels have decided that the addition of a generic and descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the addition of the words “buy” and “online” does not negate a domain name from being confusingly similar).
Accordingly, in the present case, the addition of the term “betacodes”, that indicates that codes to access a pre-release limited access version of the program is or may be available at the disputed domain name, is not sufficient to the Panel to distinguish the disputed domain name from Complainant’s mark. Besides, the addition of the number “5” clearly refers to the GTA version V which is not yet itself a registered trademark but rights can be recognized in light of pre-release marketing (Julia Fiona Roberts v. Russel Boyd, WIPO Case No. D2000-0210).
Besides, the WIPO overview 2.0, paragraph 1.2 provides: “The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. 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 […]”.
The Panel therefore concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by Complainant. There is no authorization to Respondent to utilize the GTA in the disputed domain name; Respondent has not acquired any trademark usage in Complainant’s name; Respondent is not commonly known to be affiliated with GTA and, there is no use in connection with a bona fide offering of goods or services since Respondent is using Complainant’s mark to generate revenue by attempting to collect personal information by falsely offering a beta version of Complainant’s GTA V video game.
Furthermore, Respondent has not provided evidence of circumstances of the type specified in paragraph 4 c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Complainant’s trademark GTA, as appropriated by Respondent, has a strong reputation and is recognised internationally. The Panel finds it implausible that Respondent was unaware of Complainant’s trademark. Neither Complainant nor its trademark has any conceivable connection with Respondent’s name or activities. The registration of a well-known trademark of which Respondent must reasonably have been aware constitutes bad faith under the circumstances of this case (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, Ints it is not the same, Gmbh v. Carlos Gil Belmonte, WIPO Case No. D2010-0456).
According to Complainant’s evidence, Respondent’s choice of the disputed domain name is designed to trap users who legitimately seek the trademark GTA. Furthermore, on the top of each page within Respondent’s website there appears Complainant’s trademark. Screen prints of Respondent’s website provided by Complainant show that various pages are designated “GTA V Beta Keys for free”. The Panel finds this conduct is likely to create confusion with Complainant’s trademark, to imply Complainant’s sponsorship, affiliation, or endorsement of products promoted on Respondent’s website, and clearly to be within the scope of paragraph 4(b)(iv) of the Policy.
The Panel concludes that Respondent’s registration and use of the disputed domain name are 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 <gta5betacodes.info> be transferred to Complainant.
Date: July 22, 2013