WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. 杨智超 (Zhichao Yang)
Case No. D2021-0335
1. The Parties
The Complainant is Take-Two Interactive Software, Inc., United States of America (“United States” or “U.S.”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Name and Registrar
The disputed domain name <rockstargamees.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2021, 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, and confirming that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On February 9, 2021, the Complainant filed an amended Complaint in English.
On February 5, 2021, the Center sent an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 9, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2021.
The Center appointed Douglas Clark as the sole panelist in this matter on March 18, 2021. 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 the parent company of the video game publishing label Rockstar Games, Inc. (“Rockstar Games”). Rockstar Games has conducted business under the ROCKSTAR house mark since at least 1998, and the ROCKSTAR GAMES mark since at least 1999. The Complainant owns the domain name <rockstargames.com>. The Complainant marks all of its entertainment software, computer games and video games with the ROCKSTAR GAMES mark. The Complainant also uses the ROCKSTAR house mark in conjunction with additional words for a variety of goods and services such as ROCKSTAR PASS and ROCKSTAR GAMES SOCIAL CLUB. The Complainant’s ROCKSTAR goods and services include some of the best-selling video games in the world such as the Grand Theft Auto series of video games.
The Complainant is the proprietor of the U.S. trade mark registrations for ROCKSTAR (U.S. Registration No. 5639907, registered on January 1, 2019) and ROCKSTAR GAMES (U.S. Registration Nos. 2456387, 4037654, and 4303689, registered on May 29, 2001, October 11, 2011, and March 19, 2013, respectively). The Complainant also owns the Chinese trade mark registration for ROCKSTAR GAMES (Chinese Registration No. 6943681, registered on February 21, 2011).
The Respondent is an individual based in China.
The disputed domain name was registered on September 12, 2020 and resolves to a parking page that provides click through links to video game related goods and services. At certain times this has included lines to references to “Gta Online Game” or “Play Gta Online” which the Panel takes as a reference to Grand Theft Auto games.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its ROCKSTAR and ROCKSTAR GAMES trade marks. It is a simple misspelling of ROCKSTAR GAMES and contains in its entirety ROCKSTAR.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s marks. Further, the Respondent has not used or prepared to use the disputed domain name in connection with any bona fide offering of goods or services or made any noncommercial or fair use of the disputed domain name. Rather, the Respondent is seeking to trade off the reputation of the Complainant which is illegitimate.
The Complainant contends that the Respondent’s registration and use of the disputed domain name is in bad faith. It contends the disputed domain name was deliberately chosen to take advantage of the Complainant’s reputation and clearly amounts to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website or by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website thereby generating click through revenue. The Complainant further contended following disclosure of the name of the Respondent that the Respondent had been the respondent in 12 UDRP proceedings where transfer of the domain name had been ordered.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue – Language of the Proceeding
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:
a) the Respondent appears to be familiar with the English language as the disputed domain name resolves to a website that contains solely English content;
b) screenshots of the disputed domain name taken by the Complainant on February 3, 2021 show content in English;
c) the disputed domain name consists of the phrase “Rockstar Games” which is comprised of English words;
d) the Complainant is not able to communicate in Chinese, and for this reason, the Complainant would incur substantial expenses for translation and the administrative proceeding would be unduly delayed.
In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:
- the Center has notified the Respondent in both English and Chinese of the language of the proceeding, and the Complaint;
- the Respondent has not commented on the language of the proceeding nor has responded to the Complaint in any way;
- the disputed domain name resolves to a page in English which links to other pages in English.
6.2 Substantive Issues
The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to;
(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 Panel finds that the disputed domain name <rockstargamees.com> is confusingly similar to the Complainant’s trade marks ROCKSTAR GAMES and ROCKSTAR. The disputed domain name is a simple misspelling of the ROCKSTAR GAMES mark with an additional “e” in “games”. In the case of the ROCKSTAR mark, the additional term “gamees” does not prevent a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element.
The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s ROCKSTAR or ROCKSTAR GAMES trade marks or to apply for registration of the disputed domain name. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent.
The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name is an intentional misspelling of the Complainant’s prior registered ROCKSTAR GAMES mark. Previous UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0).
The disputed domain name resolves to a website with links to video games and, apparently, generates click through revenue. This shows a direct link between video games for which the Complainant is known and the use of the disputed domain name. It is clear to the Panel that the Respondent has registered the disputed domain name to attract Internet users looking for the Complainant to the Respondent’s website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy.
The Panel further notes that the Respondent has been involved in over a dozen of UDRP proceedings in which panels have ordered transfer of the domain names to various trade mark owners. Therefore, the Panel finds that the Respondent’s behavior has also constituted a pattern of bad faith conduct (see section 3.1.2 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
The Complainant has therefore satisfied the third element under paragraph 4(a) 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 <rockstargamees.com> be transferred to the Complainant.
Date: April 6, 2021