WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. 徐帅伟 (Xu Shuai Wei)

Case No. D2021-1043

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 徐帅伟 (Xu Shuai Wei), China.

2. The Domain Name and Registrar

The disputed domain name <rckstargames.com> (“Disputed Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 8, 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 April 8, 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 in English on April 9, 2021.

On April 8, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021.

The Center appointed Kar Liang Soh as the sole panelist in this matter on May 20, 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’s group of companies has been offering computer games, video games and entertainment software, among other things, since 1998, under the trademark ROCKSTAR GAMES, as well as trademarks containing the term “rockstar” and/or the letter “r” with a star design (the “ROCKSTAR Marks”). The Complainant is behind successful video games like the “Grand Theft Auto” series, which sold over 335 million copies worldwide. A Google search conducted on March 15, 2021, for the phrase “Rockstar Games” garnered 83,600,000 hits. The ROCKSTAR Marks are also used on other goods and services such as magazines, guides, animated films, music publishing services.

The Complainant owns trademark registrations for the trademark ROCKSTAR GAMES, the ROCKSTAR Marks around the world, including the following:

The ROCKSTAR GAMES and the ROCKSTAR Marks have been held by an earlier UDRP panel to enjoy a significant reputation worldwide (Take-Two Interactive Software, Inc. v. Johnny, WIPO Case No. D2020-1200).

The Complainant also owns trademark registrations for the GRAND THEFT AUTO video game series (the “GTA Marks”).

The Complainant is also the registrant of the domain name <rockstargames.com>, which resolves to the Complainant’s website. The website promotes the Complainant’s products under the trademark ROCKSTAR GAMES and ROCKSTAR Marks, and has been visited over 800,000,000 times since its launch in December 1998. The Complainant has an active social media presence featuring the trademark ROCKSTAR GAMES and ROCKSTAR Marks including social media pages at “www.facebook.com/rockstargames”, “www.instagram.com/rockstargames”, “www.twitter.com/rockstargames” and “www.youtube.com/rockstargames”.

The Disputed Domain Name was registered on January 21, 2020. On or about March 15, 2021 the Disputed Domain Name resolved to a website featuring prominent links entitled “Gaming Games Online”, “GTA Vice City Stories”, “Listing Product Online”, among others, which redirect to pages with links to third party gaming websites like “www.play.google.com” and “www.filamentgames.com”. These links on the redirected pages are associated with the text “Ad” typically suggestive of ad-related origins. The website displayed a top banner offering the Disputed Domain Name for sale. On or about April 16, 2021, the website featured other prominent links entitled “Online Casino”, “Real Online Casinos that Pay Real Money”, and “Best Online Casino”, among others.

Very little information is known about the Respondent beyond what is apparent on the WhoIs record of the Disputed Domain Name and the Registrar verification pursuant to this proceeding. The Complainant could not correspond directly with the Respondent prior to the Complaint as the Respondent’s details were not available in the public WhoIs. The Respondent’s phonetic name has been associated with many past UDRP proceedings (e.g., Newcote Int’l Limited v xushuaiwei, WIPO Case No. D2016-1986 in respect of the domain names <betvicto.com>, <betvictr.com>, and <betvitor.com>; Swissquote Group Holding SA v Domain Administrator, See PrivacyGuradian.org / xu shuaiwei, WIPO Case No. D2019-0042 in respect of the domain names <swissqote.com> and <swssquote.com>; Merryvale Limited v xushuaiwei, Xu Shuaiwei, WIPO Case No. D2015-0124 in respect of <casionbetway.com>; Zions First National Bank v Xu Shuaiwei / Domain Administrator, WIPO Case No. D2015-1177 in respect of <zonsbank.com>) as respondent, which resulted in the transfer of the domain names concerned. The city of the Respondent in all these cases is the same as in this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(i) The Disputed Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights. The Disputed Domain Name consists of a mere common, obvious and intentional misspelling of the trademark ROCKSTAR GAMES. It is nearly identical and confusingly similar to the ROCKSTAR Marks. It contains the entirety of the ROCKSTAR Marks and the trademark ROCKSTAR GAMES. The only difference is the omission of the non-distinctive “o” in the term “rockstar” from the Disputed Domain Name;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name is not the trade name or company name of the Respondent. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the ROCKSTAR Marks. The Respondent has failed to use the Disputed Domain Name in connection with any bona fide offerings. Rather the Respondent is using the Disputed Domain Name to profit from redirecting visitors to sites unaffiliated with the Complainant, bearing the Complainant’s trademarks, including websites associated with the Complainant’s competitors; and

(iii) The Disputed Domain Name was registered and is being used in bad faith. The ROCKSTAR Marks are widely known and well recognized throughout the world. Given the popularity of the ROCKSTAR Marks, a presumption can be made that the Respondent was aware of the Complainant and its trademarks when the Disputed Domain Name was registered. The Disputed Domain Name constitutes typosquatting. The Respondent is trading on the value established on the Complainant’s marks to attract users to the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The default language of the proceedings is Chinese as the registration agreement for the Disputed Domain Name is Chinese. Nevertheless, the Panel may determine the language of the proceeding to be otherwise under paragraph 11(a) of the Rules having regard to all the circumstances.

The Complainant has requested that the language of the proceeding be in English and the Panel agrees. In making this determination, the Panel has taken into consideration the following circumstances:

(a) The Disputed Domain Name resolved to a website that has exclusively English content;
(b) The Disputed Domain Name comprises English words;
(c) The Complainant has confirmed its inability to communicate in Chinese and would incur substantial translation expenses causing undue delay in the proceedings;
(d) The Respondent has neither objected to the Complainant’s language request nor filed a Response;
(e) No apparent benefit to the proceeding would be served by insisting that the language of proceeding remain as Chinese; and
(f) The Panel is bilingual and is competent to handle the proceeding in English and Chinese.

6.2. Substantive Elements of the Policy

To succeed in the proceeding, paragraph 4(a) of the Policy requires the Complainant to establish the following:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied on the evidence of the Complainant’s trademark registrations for the trademark ROCKSTAR GAMES and ROCKSTAR Marks that the Complainant has rights in these trademarks. The Disputed Domain Name in essence, but for the omission of the only letter “o”, entirely incorporates all characters of both these trademarks in the same consecutive order as they appear in these trademarks.

The Panel is of the opinion that the covert omission of the letter “o” would require more than casual effort of a reasonable person to spot within the long string of 12 characters in the Disputed Domain Name. Accordingly, the nonexistence of this letter in the Disputed Domain Name is ineffective to prevent it from being confusingly similar to the trademark ROCKSTAR GAMES. The Panel therefore holds that the first limb of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent is neither a licensee of the Complainant nor authorized to use the trademark ROCKSTAR GAMES and ROCKSTAR Marks. There is nothing before the Panel to suggest even remotely that the Disputed Domain Name is a name of the Respondent or that the Respondent is commonly known by the Disputed Domain Name. The links featured on the webpages redirected from the website resolved from the Disputed Domain Name are characteristic of ad-related links and there is nothing in the evidence to suggest that the links are otherwise than such. Such ad-related links are inconsistent with any reasonable likelihood that the Respondent may be making a bona fide or legitimate noncommercial use of the Disputed Domain Name.

The Panel is therefore satisfied that the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The burden of production falls upon the Respondent to show otherwise. However, in the absence of a Response, the prima facie case is unrebutted, and the Panel concludes that the second limb to paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Based on the evidence in the proceeding, the Panel accepts that the trademark ROCKSTAR GAMES and the ROCKSTAR Marks are sufficiently well-known and the Respondent must have been aware of these trademarks at the time of registering the Disputed Domain Name. The inclusion of GTA Marks in the titles of prominent links featured on the website resolved from the Disputed Domain Name leaves the Panel without a doubt that the Respondent was fully aware of the trademark ROCKSTAR GAMES, the ROCKSTAR Marks and the Complainant’s products under the GTA Marks at all material times.

The Respondent could not have registered the Disputed Domain Name other than for the purpose of creating an impression of association with the Complainant as described in paragraph 4(b)(iv) of the Policy, which states:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Panel has already found that the links on the website resolved from the Disputed Domain Name serve an ad-related function. The Complainant has asserted that the website is linked to webpages which link to computer/video gaming websites operated by its competitors. The Respondent has not denied this. The Panel is persuaded that there are sufficient indicators on the face of these links that are representative of a purpose of commercial gain, whether for the Respondent, or for online resources connected to the links. In the circumstances, the Disputed Domain Name appears clearly intended to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark ROCKSTAR GAMES, ROCKSTAR Marks and the GTA Marks as to the source, sponsorship, affiliation or endorsement of the website. The Panel therefore holds that the facts of the present case fall within the bad faith registration and use exemplified by paragraph 4(b)(iv) of the Policy.

Further corroboration of bad faith is patent in the following pieces of evidence before the Panel:

a) the top banner on the website offering the Disputed Domain Name for sale;
b) the uncanny common phonetic name and geographical location of the Respondent and the respondents in Newcote Int’l Limited v xushuaiwei, supra; Swissquote Group Holding SA v Domain Administrator, See PrivacyGuradian.org / xu shuaiwei, supra; Merryvale Limited v xushuaiwei, Xu Shuaiwei, supra; and Zions First National Bank v Xu Shuaiwei / Domain Administrator, supra indicating they are one and the same person; and
c) the pattern of typographically questionable domain names in Newcote Int’l Limited v xushuaiwei, supra; Swissquote Group Holding SA v Domain Administrator, See PrivacyGuradian.org / xu shuaiwei, supra; Merryvale Limited v xushuaiwei, Xu Shuaiwei, supra; and Zions First National Bank v Xu Shuaiwei / Domain Administrator, supra reminiscent of the present case.

It is well noted that the Respondent has chosen not to respond to the Complainant’s serious allegations. The Panel therefore draws an adverse inference against the Respondent, to the effect that the Respondent is unable to refute the allegations. In fact, the failure to respond to a complaint has been found by past UDRP panels to be a basis for directly inferring bad faith (e.g., The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

In view of the above, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith under the third limb of paragraph 4(a) of the Policy.

7. Decision

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 <rckstargames.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: June 7, 2021