WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. v. Sajal Rajbhandari
Case No. D2021-0336
1. The Parties
The Complainant is Take-Two Interactive Software, Inc., United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Sajal Rajbhandari, Nepal.
2. The Domain Name and Registrar
The disputed domain name <apkgta5.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2021. On February 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 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. The Center sent an email communication to the Complainant on February 5, 2021, 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 February 9, 2021.
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 of the Complaint, and the proceedings commenced on February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on March 8, 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 a well-established international publisher, developer and distributor of interactive entertainment software and accessories, including video and computer games. One of its products is the Grand Theft Auto series of video games, which was launched in 1997 under the Complainant’s “Rockstar Games” label. The name of this game series is frequently shortened by the Complainant, players of the games and others to its acronym, that is “GTA”, and the Complainant owns many trade mark registrations to protect this trading style. These include, by way of example only, United States Trade Mark, registration number 3,439,237, for GTA, in classes 9 and 41, registered on June 3, 2008.
The fifth installment in the Grand Theft Auto series was launched in September 2013 and is commonly referred to as “GTA V”, “V” being the Roman numeral denoting five. GTA V-related goods and services produced by the Complainant are promoted online, including at the Complainant’s website at “www.rockstargames.com/gtav”. Total sales of this series to date exceed 135 million units and series installments are available for download through various websites operated by the Complainant as well as through the Google Play Store and Apple’s App Store.
The disputed domain name was registered on July 23, 2016. It resolves to a website, the home page of which is headed “GTA 5 for Android”, which features the Complainant’s “GTA V” logo and the strapline “Play GTA 5 anywhere you go”. Underneath the strapline are buttons from which users can download beta versions of the Complainant’s GTA V game for Android and iOS devices. The “About” page on the Respondent’s website states that the Respondent’s team “collaborated with Rockstar to bring you Grand Theft Auto V early before it was officially released”. Another webpage offers a tutorial on “How to download GTA 5 On Android Apk!” and features claims such as “GTA V android has one of the best graphics on mobile platform […]”.
On September 29, 2020, the Complainant attempted unsuccessfully to contact the Respondent in order to assert that it was infringing its copyright and trade marks and request that it cease use of the disputed domain name. Thereafter, on December 11, 2020, the Complainant’s counsel filed a Notification of Infringement pursuant to the United States Digital Millennium Copyright Act with the hosting provider of the Respondent’s website, which resulted in access to the website being disabled. However, the Respondent changed hosting provider and the disputed domain name once again resolved to the Respondent’s website.
5. Parties’ Contentions
The Complainant refers to its portfolio of GTA marks, full details of one of these marks having been set out above, and says that the disputed domain name is confusingly similar to those marks. The disputed domain name contains the Complainant’s GTA mark in full. The only differences between them are the generic Top-Level Domain (“gTLD”) “.com” (which is not taken into account for the purposes of the comparison), the letters “apk” and the number “5”. The additional letters and number exacerbate the likelihood of confusion because the letters “apk” will be perceived as denoting a file which can be downloaded from the Google Play Store and the number “5” will be seen as a reference to the best-selling fifth installment of Grand Theft Auto.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by that name, nor is it a licensee of the Complainant, nor is it otherwise authorized to use the Complainant’s GTA marks. Use of the Complainant’s GTA trade mark in the disputed domain name does not bear any legitimate relationship to the Respondent’s business. The Respondent has sought to profit from the Complainant’s rights in its GTA marks by redirecting visitors to its website so they can download its own beta versions of the GTA V game for Android and iOS devices without the Complainant’s authorization or consent. The Respondent’s use of the disputed domain name to offer for sale competing products or goods of the Complainant does not comprise a bona fide offering of goods and services.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. Given the fame and longstanding use by the Complainant of its GTA marks since as early as 1997, there can be no doubt that the Respondent was aware of the Complainant’s rights in its mark as at the time the disputed domain name was registered in July 2016, particularly as the Respondent is using the disputed domain name for a website which purports to offer for sale the Complainant’s GTA goods and services. Further, the Respondent’s use of the disputed domain name is in bad faith. The Respondent has intentionally attempted to attract visitors to its website by creating a likelihood of confusion with the Complainant’s GTA marks as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The Respondent’s purported offering of infringing downloads of the Complainant’s GTA V game, which compete with those of the Complainant and which is without the Complainant’s authorization or consent, is clearly in bad faith. This is further evidenced by the Respondent’s use of indicia similar to those used by the Complainant in connection with the GTA marks and game series, including its stylized block font and the use of characters depicted in a similar animation style.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 Complainant has provided details of the many registered trade marks it owns for GTA, which establish its rights in this mark.
As a technical requirement of registration, the gTLD, that is “.com” in this case, is typically disregarded when assessing confusing similarity. The differences between the Complainant’s GTA mark and the disputed domain name therefore comprise the prefix “APK” and the suffix “5”. Whilst the Complainant’s mark consists of three of the seven characters which comprise the relevant component of the disputed domain name, this does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s GTA mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Section 2.2 of the WIPO Overview 3.0 provides examples of factors which might point to a bona fide offering of goods and services by a respondent. These include “other evidence generally pointing to a lack of indicia of cybersquatting intent”. The evidence in these proceedings points in the other direction. The Respondent’s website enables Internet users to download unlicensed and infringing copies of the Complainant’s GTA V software on both Android and iOS devices. Claims on its website such as the assertion that the Respondent has “collaborated with Rockstar to bring you Grand Theft Auto V early before it was officially released” are clearly intended to mislead Internet users into believing that such downloads are made with the consent of the Complainant. As the panel found in Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein, WIPO Case No. D2015-1050; “The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trade marks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a “bait and switch” strategy that lacks bona fides and does not give rise to rights or a legitimate interests under the Policy”. Finally, the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent.
The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character. Furthermore, the nature of the disputed domain name carries a risk of implied affiliation; see WIPO Overview 3.0, section 2.5.1.
Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy this burden. The Panel accordingly finds that the Respondent has no rights or interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The composition of the disputed domain name is such that it is closely associated with the Complainant; in addition to containing the Complainant’s GTA trade mark, it includes the letters “apk”, which signify a downloadable app created for Android, Google’s mobile operating software, and “5”, which will be perceived as a reference to the Complainant’s fifth series of its Grand Theft Auto game. This points to an awareness by the Respondent of the Complainant and its GTA V gaming software as at the date of registration of the disputed domain name coupled with an intention to take unfair advantage of the Complainant’s repute in its GTA mark in some manner. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”. The Respondent’s awareness of the Complainant as at the date of registration of the disputed domain name is confirmed by the use to which it has been put following registration.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls precisely within these circumstances in it resolves to a website which makes available for download copies of the Complainant’s GTA V software, in breach of the Complainant’s copyright and without the consent of the Complainant and on the basis of the untrue claim that that Complainant has authorised the downloads. The belief of Internet users that the Respondent’s websites is connected with the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s GTA trade mark. The additional characters “apk” and “5”, will, for reasons outlined above, accentuate the false impression of a connection with the Complainant’s business and further increase the likelihood of confusion to Internet users; see WhatsApp, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Mohammed Alkalbani, Ops Alkalbani, M. Rashid Alkalbani, WIPO Case No. D2016-2299. Moreover, there is no conceivable good faith use which the Respondent could make of the disputed domain name. Finally, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. The overall circumstances clearly point to bad faith registration and use; see, by way of similar example, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
The Panel accordingly finds that the disputed domain name was both 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 disputed domain name <apkgta5.com> be transferred to the Complainant.
Date: March 22, 2021