WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. WhoisGuard, Inc., WhoisGuard Protected / Ozhan Hassan
Case No. D2013-1433
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 WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / Ozhan Hassan of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <grandtheftautocodes.net> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On August 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 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 August 29, 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 Respondent of the Complaint with the amended Complaint, and the proceedings commenced on August 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2013. The Respondent sent an email communication to the Center on September 2, 2013, to which the Complainant replied on September 3, 2013. On September 19, 2013, the Center informed the Parties of the commencement of the Panel appointment process.
The Center appointed Ian Lowe as the sole panelist in this matter on September 30, 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 consumer entertainment. It publishes a range of some of the most popular video games for a variety of platforms including personal computers, mobile phones, gaming consoles and other devices. One of the video game series produced by the Complainant through its wholly-owned subsidiary Rockstar Games, Inc. is “Grand Theft Auto”, which comprises interactive movies in which the player in the role of the main character can influence the outcomes of the story. The most recent game is “Grand Theft Auto IV” that takes around 30 hours to play through.
The Complainant is the registered proprietor of United States trademark number 2,148,765 GRAND THEFT AUTO (and design) registered on April 7, 1998. Rockstar Games owns numerous domain names related to GRAND THEFT AUTO including <grandtheftauto.com> and <grandtheftautov.com>.
Sales to date of the Grand Theft Auto series of video games amount to over 112 million units and the most recent installment, Grand Theft Auto IV, sold 20 million units worldwide. As a result of the hugely successful sales of Grand Theft Auto products and the publicity the Complainant has received, the GRAND THEFT AUTO mark has acquired a substantial reputation world-wide.
The Respondent Ozhan Hassan is an individual apparently located in Sydney, Australia. He has no business association with the Complainant. At the time of filing the Complaint, the Domain Name resolved to a website (the “Website”) apparently offering a free “beta” version of Grand Theft Auto V. The Complainant has never made available a pre-release, beta version of any of the Grand Theft Auto series and is not offering a beta version of Grand Theft Auto V. The Respondent is not authorized to offer any such version.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its GRAND THEFT AUTO trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not make any formal reply to the Complainant’s contentions. In an email to the Center, acknowledging receipt of the Complaint, the Respondent stated that he had sent an email to the Complainant to the effect that he was not aware that he was infringing on any trademarks at the time of registering the Domain Name and apologized for doing so. With respect and as a gesture of good faith he wished to transfer the Domain Name to the Complainant. In the event, the Domain Name was not transferred.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove 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 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 undoubted, uncontested rights in the GRAND THEFT AUTO mark both by virtue of its United States trademark registration and as acquired through longstanding widespread use. The Domain Name differs from the Complainant’s trademark only by the addition of the word “codes”, ignoring the “.net” suffix for this purpose. The generic term “codes” does not detract from the distinctiveness of the GRAND THEFT AUTO mark. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. He is not authorized in any way by the Complainant and is apparently using the Domain Name for a website offering either non-existent or unauthorized copies of the Complainant’s new version of the Grand Theft Auto video game. The Panel therefore considers that the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not formally responded to the Complaint or sought to refute this prima facie case but rather has stated in his email to the Center of September 2, 2013 that he wished to transfer the Domain Name to the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the nature of the Domain Name and the use to which it has been put, the Panel cannot see that there is any doubt that the Respondent registered the Domain Name with the Complainant and its products in mind. As indicated above, the Respondent has used the Domain Name for a website offering unauthorized code in respect of the Complainant’s products. The Panel considers that in doing so the Respondent has intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Name with the purpose of attracting Internet users to the Website. The obvious inference is that this was for commercial gain. Although the commercial intent may not be obvious, the offering of a free, unauthorized “beta” version of the Complainant’s forthcoming new Grand Theft Auto video game appears to the Panel to constitute bad faith registration and use of the Domain Name. The list of bad faith elements set out in paragraph 4(b) of the Policy is not exhaustive. See Take-Two Interactive Software, Inc. v. Chris Rivers, WIPO Case No. D2013-0014. Rather than respond to the Complaint, the Respondent has indicated that he is prepared to transfer the Domain Name to the Complainant. In the circumstances, the Panel finds that the Domain Name was registered and is being used 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 Domain Name <grandtheftautocodes.net> be transferred to the Complainant.
Date: October 11, 2013