WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. Null a/k/a Cielo Vivas

Case No. D2013-0957

1. The Parties

The Complainant is Take-Two Interactive Software, Inc. of New York, New York, United States of America (“U.S.”), represented by Mitchell, Silberberg & Knupp LLP, of Los Angeles, California, U.S.

The Respondent is Null a/k/a Cielo Vivas of Birmingham, Alabama, U.S.

2. The Domain Name and Registrar

The disputed domain name <gta5betagiveaway.com> (the “Domain Name”) 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 29, 2013 listing the Respondent as “Cielo Vivas” (i.e., the name of the Administrative Contact for the Domain Name). On May 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 Complainant filed an amended Complaint on June 6, 2013 to list the Respondent as “Null” – the name of the listed registrant for the Domain Name in the Registrar’s WhoIs records.

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 Respondent of the Complaint as well as the amended Complaint and the proceedings commenced on June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for filing a response was July 3, 2013. The Respondent did not file a response. Accordingly, the Center notified the Parties of the Respondent’s default on July 4, 2013.

The Center appointed Marylee Jenkins as the sole panelist in this matter on July 22, 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

Based on the review of the uncontested evidence submitted with the Complaint, the Complainant is the owner of the following U.S. Trademark registrations for the mark GRAND THEFT AUTO, Registration No. 2,148,765, registered on April 7, 1998 and the mark GTA, Registration No. 3,439,237, registered on June 3, 2008. The Complainant‘s wholly-owned subsidiary, Rockstar Games, owns numerous domain names incorporating the marks GRAND THEFT AUTO or GTA, 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 Domain Name was registered on March 21, 2013 and is set to expire on March 21, 2014. The registrant of the Domain Name is listed as “null” in the corresponding WhoIs record. The website accessible at the Domain Name initially showed a page indicating “Account Suspended” and then rerouted to a “default page” at ”www.nxroot.org/”.

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint on its ownership of the marks GRAND THEFT AUTO and GTA for which it owns U.S. federal trademark registrations as well as on its common law rights in the mark GTA: V. The Complainant claims that it has used its marks GRAND THEFT AUTO and GTA since 1998. The Complainant further claims that these marks are distinctive and famous and widely recognized through the United Sates and the world and that the Complainant’s extensive sales and advertising of its products using its marks has resulted in widespread recognition of the GRAND THEFT AUTO and GTA marks with the Complainant. The Complainant claims that the newest version of its video game, GRAND THEFT AUTO: V, has received considerable media coverage and the release of the video game is highly anticipated.

The Complainant alleges that the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks GTA and GTA: V. Citing UDRP decisions, the Complainant alleges that the differences between its mark GTA and the Domain Name are slight distinctions that do not add any significant element and do not change the overall impression of the mark as being confusingly similar to the Complainant’s mark GTA. The Complainant claims common law rights to the mark GTA: V and alleges that it is not significant that GTA: V is not yet a registered trademark. Citing previous UDRP decisions, the Complainant alleges that common law rights can be recognized in a domain name dispute to prevent unauthorized use of a mark or name. Further, the Complainant alleges that the suffix “V” denotes the sequel number to its video game series and that the dominant feature of the mark and the Domain Name is the Complainant’s registered mark GTA. The Complainant, citing previous UDRP decisions, also alleges that the added words in the Domain Name, “beta” and “giveaway”, are generic or common expressions and that these words “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.”

The Complainant also alleges that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant alleges that it has never assigned, granted, licensed, sold, authorized or otherwise agreed to the use of the Domain Name by the Respondent and that the Respondent registered the Domain Name without authorization or permission from the Complainant. The Complainant further alleges that the Respondent registered the Domain Name to divert users to the Respondent’s website for commercial gain by falsely offering a non-existent “beta” version of Complainant’s GRAND THEFT AUTO: V video game in an apparent phishing scheme. Specifically, the Complainant alleges that the Respondent used the Domain Name to link to a website that makes use of the Complainant’s copyrighted content (including screenshots and images from the Complainant’s video game) and the Complainant’s GRAND THEFT AUTO and GTA trademarks in order to generate revenue by attempting to collect personal information of Internet users by falsely offering a beta version of the Complainant’s GRAND THEFT AUTO: V video game. The Complainant contends that the Respondent is not commonly known to be affiliated with GTA and that the Respondent cannot establish that it was making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert customers.

The Complainant also alleges that the Respondent has registered and is using the Domain Name in bad faith, because of its intentional attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant further alleges that the Respondent is deceptively diverting users to the Respondent’s website in order to benefit commercially by improperly capitalizing on the fame of the Complainant’s GTA mark and by siphoning the Complainant’s valuable goodwill. The Complainant alleges that the Respondent’s intent to capitalize on the confusion as to the source, sponsorship, or affiliation of the Respondent’s website is evidenced by the Respondent’s use of the entirety of the Complainant’s mark. In addition, the Complainant alleges that the Respondent’s registration of the Domain Name is disruptive to the Complainant’s business, curtailing its right to exploit the value of its trademark on the Internet and blocking its efforts to capitalize on its exclusive right to actively promote its products under its GTA mark.

B. Respondent

The Respondent did not file a Response with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder 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.

Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the marks GRAND THEFT AUTO and GTA. Although the Complainant claimed common law rights in the mark GTA: V the Panel finds that the evidence submitted is not sufficient to support a finding that that the Complainant has established common law rights in the mark GTA: V.

A review of the second level of the Domain Name shows that it fully incorporates the Complainant’s GTA mark in combination with the number “5” and the terms “beta” and “giveaway”. The Panel finds that the Domain Name is confusingly similar to the Complainant’s GTA mark and that the addition of the number “5” and the terms “beta” and “giveaway” do not detract from the confusing similarity of the Domain Name to the Complainant’s GTA mark. On the contrary, the addition of these added terms supports the Complainant’s allegation that there is further confusion by implying that the test version of the Complainant’s video game marketed under the Complainant’s GTA mark and now in its fifth installment is available at the site associated with the Domain Name. The undisputed evidence shows that the Complainant has established a long time use of its GTA mark, that the Complainant’s GTA mark is well known and that the Respondent’s use of the Complainant’s GTA mark in the Domain Name undoubtedly would result in an association of the Domain Name with the Complainant. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the holder 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 or service mark at issue.

The Complainant has stated in the Complaint that the Complainant’s marks were never assigned, granted, licensed, sold, or transferred to the Respondent and that the Respondent was never in any way authorized to register or use any mark or name of the Complainant in any manner or form. The Complainant has also established that the Respondent lacks rights or legitimate interests in the Domain Name. Particularly, no evidence has been presented by the Respondent that might give rise to any rights or legitimate interests of the Respondent in the Domain Name.

The Complainant has well established rights in the GTA mark and the submitted and uncontested evidence shows that the Respondent had actual knowledge of the Complainant’s GTA mark and based its use of the Domain Name on the Complainant’s mark. Further, the evidence submitted does not show that the Respondent was making any legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. On the contrary, the undisputed evidence reveals that the Respondent linked the Domain Name to a website that made use of the Complainant’s trademarks GRAND THEFT AUTO and GTA and the Complainant’s copyrighted materials in a phishing scheme disguised as an offer to consumers of a downloadable beta version of the Complainant’s video game. The Panel accordingly finds that the Respondent has no rights or legitimate interests in or to the Domain Name in any fashion and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the website or location or of a product or service on the holder’s website or location.

The Panel finds that the Respondent had full knowledge of the Complainant’s GTA mark at the time of its registration of the Domain Name. Based upon the confusing similarity of the Domain Name to the Complainant’s GTA mark, no possible legitimate interest or right in the Domain Name by the Respondent, and the Respondent’s apparent and actual knowledge of the Complainant’s GTA mark at the time of the registration of the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Panel further finds that the uncontested evidence supports and confirms that the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. The undisputed evidence shows that the Respondent used the Domain Name in an apparent phishing scheme linking the Domain Name to a website making use of the Complainant’s trademarks and copyrighted materials and purportedly offering a downloadable beta version of the Complainant’s video game after a consumer registers with the website. The second level Domain Name itself implies an offer of a beta version of the fifth installment of the Complainant’s video game. The Panel therefore finds that the Respondent was clearly using the Domain Name in an attempt to pass itself off as the Complainant or as being associated with or sponsored by the Complainant in order to fraudulently collect information from consumers for commercial gain. When considering such findings and the uncontested evidence in their entirety, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <gta5betagiveaway.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: August 12, 2013