WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Private Whois Service
Case No. D2013-1459
1. The Parties
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.
Respondent is Private Whois Service of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <grandtheftautoonline.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 26, 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 corporation duly organized and existing under the laws of Delaware. It was formed in 1993 and is one of the world’s leading publishers, developers and distributors of interactive entertainment products, including video games and related software. Take-Two develops and publishes some of the most successful, popular, and best-selling titles in the industry.
One of the leading video game series produced by Take-Two is Grand Theft Auto (hereinafter “GTA”). The GTA video game series is composed of several of the most popular and fastest selling video games of all time. Starting with Grand Theft Auto, which was released in 1998, the series has included GTA London, GTA 2, Grand Theft Auto III, Grand Theft Auto: San Andreas, Grand Theft Auto: Vice City, Grand Theft Auto IV, Grand Theft Auto: Chinatown Wars, Grand Theft Auto: The Lost and the Damned, and Grand Theft Auto: The Ballad of Gay Tony.
Take-Two is the sole and exclusive owner of the federally-registered trademarks: 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, was registered on April 7, 1998; GRAND THEFT AUTO: SAN ANDREAS (Registration No. 2,993,273), which was filed with the USPTO on December 17, 2003, and registered on September 6, 2005; VICE CITY STORIES (Registration No. 3,345,871), which it filed with the USPTO on March 21, 2006, and subsequently registered on November 27, 2007; GRAND THEFT AUTO VICE CITY, which claimed first use in May 24, 2002, filed with the USPTO on November 19, 2002, and later registered on December 14, 2004; and GTA (Registration No. 3,439,237), which claimed first use as of September 30, 1999, filed with the USPTO on March 29, 2007.
The disputed domain name was registered on July 6, 2004 and currently seems to have pay-per-click advertising.
5. Parties’ Contentions
Complainant contends that the disputed domain name registered by Respondent incorporates the entirety of Complainant’s trademark GRAND THEFT AUTO. The only difference between Complainant’s name and the disputed domain name is the use of the word “online,” apparently to indicate that Respondent’s site is an official “online” source of genuine GRAND THEFT AUTO related products, services, and/or content.
Complainant also argues that the mere addition of a generic word or number to a registered trademark has consistently been deemed insufficient to avoid confusing similarity in cases decided under the Policy and involving circumstances similar to those at present.
Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name, that Respondent has not prepared or used the disputed domain name in connection with any bona fide offering of goods or services related to the disputed domain name, is not commonly known by the disputed domain name, and has not made any noncommercial or fair use of the disputed domain name. Complainant also states that once a prima facie case was made showing that a respondent lacks rights to the disputed domain name, the burden shifts to the respondent to come forward with proof that it has some legitimate interest in the disputed domain name to rebut the presumption.
According to Complainant, Respondent has acted in bad faith because Respondent has intentionally attempted to attract, presumably 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. Respondent is deceptively diverting the public to the disputed domain name by improperly capitalizing on the fame of GRAND THEFT AUTO and by siphoning Complainant’s valuable goodwill. Indeed, by using the entirety of Complainant’s GRAND THEFT AUTO trademark, Respondent clearly intends to capitalize on the initial interest confusion as to source, sponsorship or affiliation of Respondent’s website.
Complainant further contends that Respondent’s actions also constitute bad faith under paragraph 4(b)(iv) of the Policy.
Complainant requests as a remedy the transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s GRAND THEFT AUTO trademark.
The disputed domain name <grandtheftautoonline.com> differs from Complainant’s GRAND THEFT AUTO registered trademark only in the addition of the generic term “online”. The Panel finds that such a difference is not enough to characterize the disputed domain name as being distinct from Complainant’s trademark.
Furthermore, the Panel finds that adding generic or common expressions, such as “online” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant. In this case the mentioned expression does not serve any distinguishing function and can even increase the possibility of confusion.
The Panel finds that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for Respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy, whose circumstances are:
(i) before any notice to Respondent of the dispute, use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) where Respondent as an individual, business, or other organization, has been commonly known by the disputed domain name, even if Respondent has acquired no trade mark or service mark rights; or
(iii) where Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel notes that the web site to which the disputed domain name resolves is used to direct Internet users to a pay-per-click linking portal. Complainant contends that Respondent derives a financial benefit in the form of pay-per-click revenue from the web traffic that is diverted through the disputed domain name to these linking portals. There is no evidence to support the premise that Respondent is operating a bona fide business through the web site to which the disputed domain name resolves, or that Respondent is affiliated with, or authorized by Complainant. Complainant has therefore made out a prima facie case.
Respondent has failed to file a Response to the Complaint. It still remains for the Panel to determine whether Respondent has legitimate rights or interests in the disputed domain name.
In these circumstances, considering the reputation of Complainant’s mark and the Panel’s inference that Respondent chose the disputed domain name purposefully, it is clear to the Panel that Respondent has not rebutted the prima facie case and accordingly the Panel finds that Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently the Panel considers that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain name in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The choice of the disputed domain name is similar to the trademark corresponding to a well-known videogame and Respondent has not provided any explanation of the grounds for such election.
At the time the Complaint was filed and at the time of this decision, the disputed domain name resolves to a web page that offers visitors pay-per-click ads and links to sites of other companies, including Complainant's competitors.
Under the Policy, it is evidence of bad faith that, “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”, Policy paragraph 4(b)(iv). Respondent used Complainant’s known trademark to attract Internet users to Respondent’s website where pay-per-click ads and links to competing websites are offered. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
The Policy is designed to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. This Panel is persuaded by the totality of the circumstances in this case that Respondent’s primary motive for the registration of the disputed domain name was cybersquatting. For the reasons set forth above, the Panel finds that the disputed domain name has been registered and is being used in bad faith by Respondent.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <grandtheftautoonline.com> be transferred to Complainant.
Pablo A. Palazzi
Date: October 7, 2013