WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rockstar Games v. Steve Twining

Case No. D2007-0497

1. The Parties

The Complainant is Rockstar Games, New York, New York, United States of America, represented by Gena A. Feist, Esq., United States of America.

The Respondent is Steve Twining, Berkeley, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <bully2.com>, <gtavii.com> and <gtaviii.com> are registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 3, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On April 12, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint by email and hard copy on April 16 and 19, 2007, respectively. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced on April 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2007.

The Center appointed Richard G. Lyon as the sole panelist in this matter on May 23, 2007. Due to unforeseen circumstances, Mr. Lyon found it necessary to withdraw from the appointment. The Center appointed William R. Towns as the sole panelist on May 25, 2007. 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 owner of the federally registered trademark GRAND THEFT AUTO. The United States Patent and Trademark Office (USPTO) issued a registration certificate for the mark on April 7, 1998. The Complainant has used this mark since at least 1998 in connection with the popular “Grand Theft Auto” video game series, which includes GTA London, GTA2, Grand Theft Auto III, and the soon to be released Grand Theft Auto IV. Grand Theft Auto is commonly referred to as GTA, and the Complainant uses domain names such as <gta2.com>, <gta3.com>, <gta4>com>, and <gtaiv.com>, in connection with its official website. The Complainant also produces a video game titled Bully, first announced on May 9, 2005, and released on October 17, 2006, and has submitted a trademark application for BULLY to the USPTO.

The Respondent registered the disputed domain names <gtavii.com>, <gtaviii.com>, and <bully2.com> on August 1, 2006. The disputed domain names have been used to resolve to parked “pay-per-click” websites with advertising links for items unrelated to the Complainant’s products. The record further reflects the Respondent’s registration of several other domain names that appear to correspond to trademarks of other video game producers, including <residentevil16.com.> and <onimucha5.com>.

5. Parties’ Contentions

A. Complainant

The Complainant asserts common law trademark rights in GTA, GTA2, GTIII, GTAIV, and BULLY. According to the Complainant, these marks have been used extensively around the world on television, the internet, in magazines, and in various other media. The Complainant avers that is has spent millions of dollars on various types of advertising involving these marks. The Complainant states that over 13 million copies of video games in the GTA series and more than a million BULLY units have been sold worldwide. The Complainant alleges that its GTA and BULLY marks are famous.

The Complainant maintains that the Respondent registered the disputed domain names without authorization and in bad faith, with the intention to capitalize on the value and goodwill of the marks. The Complainant further contends that the Respondent lacks rights or legitimate interests in the marks, and that the Complainant is making a bad faith use of the marks. In addition, the Complainant alleges that the Respondent has a history of cybersquatting and has registered other third-party trademarks or game titles of other video game producers.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks that it asserts the disputed domain names are identical or confusingly similar to. The term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

The Complainant asserts common trademark rights in GTA and BULLY, which correspond to video game series or titles released by the Complainant. Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).¹ Based on the information in the record regarding the Complainant’s use of GTA and BULLY to identify it products, actual sales of video games, and advertising and promotional activities, the Panel is of the opinion that the Complainant has established common law trademark rights in GTA and BULLY. In addition, it is recognized under U.S. trademark law that the knowing or intentional copying of another’s symbol may constitute evidence of secondary meaning. 2 McCarthy § 15:38.

The Panel further finds that the disputed domain names are confusingly similar to Complainant’s GTA and BULLY mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant has established rights in these marks, and the disputed domain names incorporate the respective Complainant’s marks in their entirety. See AOL Time Warner, Inc. v. Zuccarini, WIPO Case No. D2002-0827. The addition of numerals does nothing to dispel this confusing similarity, and in fact mimics the Complainant’s corresponding use of numerals to identify titles in its GTA series.

C. Rights or Legitimate Interests

As noted above, the Complainant is required make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). It is undisputed that the Complainant has not authorized the Respondent to use the Complainant’s marks or to register domain names corresponding to those marks. However, the disputed domain names incorporate the Complainant’s marks in their entirety, and have been used by the Respondent to divert internet users to parked pay-per-click websites with advertising links to items unrelated to the Complainant’s products. There is also evidence in the record of the Respondent’s registration of domain names corresponding to the trademarks of other video game producers.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under Paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under Paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.² Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Panel has examined the record for circumstances that might support a claim by the Respondent of rights or legitimate interests in the disputed domain names falling within the safe harbor provisions of paragraph 4(c). The Panel has found none. The Respondent’s registration of multiple domain names that are confusingly similar to the Complainant’s marks, and their use to attract internet traffic to a pay-per-click websites does not constitute a bona fide offering of goods or services under paragraph 4(a)(i). There is no indication in the record that the Respondent has attempted any legitimate noncommercial or fair use of the disputed domain names under paragraph 4(a)(iii); nor any indication that Respondent has been commonly known by these domain names under paragraph 4(a)(ii). Accordingly, the Panel deems that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. 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 or 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 documented out-of-pocket costs directly related to the domain name;

(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;

(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 intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 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) 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 names in 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.

The Panel finds from the totality of the circumstances in this case that the Respondent was aware of the Complainant’s marks at the time of the registration of the confusingly similar domain names, and that the Respondent’s aim in registering these disputed domain names was in all likelihood to profit from and exploit the Complainant’s marks, by attracting internet traffic to the Respondent’s pay-per-click websites. This constitutes bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <gtavii.com>, <gtaviii.com>, and <bully2.com>, be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: June 8, 2007

¹ United States courts have required a showing of secondary meaning when giving trademark protection to literary titles of single works, even where the title may not be merely descriptive of the contents of the work. 2 McCarthy on Trademarks and Unfair Competition § 10:2 (4th ed.) (hereinafter cited as “McCarthy”). Secondary meaning is established when, in the minds of a significant number of people, the title is associated with a single source, even if the public does not know the source by name. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). See also 1 McCarthy § 10:4, at 331-32.

² Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.