WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. Chris Rivers

Case No. D2013-0014

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 Chris Rivers of El Paso, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gtavbeta.org> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient based on certain information furnished by the Registrar, Complainant filed an amendment to the Complaint on January 28, 2013.

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” 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 February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2013.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 4, 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 is the owner of registration of the word trademark and service mark GTA on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 3439237, registration dated June 3, 2008, in international classes (“ICs”) 9 and 41 covering, inter alia, entertainment software, and entertainment services (namely production of entertainment software and motion pictures). Such registration is based on an application filed on March 29, 2007, and claiming first use and first use in commerce of September 30, 1999. Complainant is also owner of registration of the word trademark and service mark GRAND THEFT AUTO on the Principal Register of the USPTO, registration number 2148765, registration dated April 7, 1998, in ICs 9 and 16, covering, inter alia, video game software and various printed matter.

Complainant produces and distributes one of the largest selling software-based video game series in the world, GRAND THEFT AUTO or GTA. The series title is produced by a wholly-owned subsidiary of Complainant, Rockstar Games, Inc. New titles in the video game series typically involve extension of the original identifier, such as GTA2 or GRAND THEFT AUTO IV. The most recent installment of the series, GRAND THEFT AUTO IV has sold 20 million copies. 112 million units of games in the GTA series have been sold worldwide. Complainant publicly announced the forthcoming release of GRAND THEFT AUTO V or GTA:V in October 2012. Complainant does not make available to members of the public a “beta” version of this video game title.

Complainant has registered numerous domain names relating to the GRAND THEFT AUTO or GTA series, including <grandtheftauto.com>, <gta2.com>, <grandtheftauto3.com>, <grandtheftautosanandreas.com>, <gtachinatownwars.com>, <gtavicecity.com>, <grandtheftauto4.com>, <grandtheftautoiv.com>, <gtaiv.com>, <gta4.com>, <grandtheftautov.com>, and <gta5.com>. These various domain names appear to resolve to pages or sub-pages of the principal website of Complainant’s wholly-owned subsidiary, Rockstar Games, Inc., at ‘’www.rockstargames.com’’. For example, as of the date of this decision, the domain name <gta5.com> resolves to <www.rockstargames.com/V/>.

Complainant has spent tens of millions of dollars advertising and promoting the GRAND THEFT AUTO or GTA video game titles in various media. Complainant has provided evidence in the form of a webpage printout that a Google search for “grand theft auto v” on November 12, 2012, returned approximately 140,000,000 hits.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on August 8, 2012.

Complainant suggests that Respondent used the disputed domain name to falsely offer a beta version of Complainant’s GTA:V video game, though such use is no longer being made. Complainant provided reference to a chat room discussion that included the following statement at the top of five consecutive listings (shown as “commented 6 months ago”): “Get your GTA V Beta Key only at "gtavbeta()org"! Thank you so much for the free key!”¹ Using the “Wayback Machine Internet Archive”, the Panel found that the disputed domain name was used as of August 13, 2012, to host a webpage requesting Internet users to (1) share its page, (2) post the message in the preceding sentence on five different gaming pages, and (3) “like” its Facebook page. In return for completing these three steps, this webpage offered “Free GTA: V Beta Keys”.² The webpage, which had been located at the disputed domain name, stated “All keys are legal and valid” and included the statement “Completely free and just on our site! GTA:V”, suggesting that beta software is available for download in addition to the “key”.

The disputed domain name is not currently associated with an operational website.

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark GTA and that the disputed domain name is confusingly similar to that trademark. Complainant contends that it has been using the GTA trademark in connection with videogames since 1998, and that it owns registration of the trademark. Complainant argues that GTA and GRAND THEFT AUTO have achieved a high degree of distinctiveness and secondary meaning.

Complainant contends that the disputed domain name is confusingly similar to its GTA trademark. Complainant argues that addition of the suffix “V” denotes the sequel number in the GTA series, and that the term “beta” is a commonly understood reference to a pre-release testing version of a software program. Complainant alleges that adding the descriptive elements “V” and “beta” to its well-known GTA trademark does not diminish the likelihood that Internet users will associate the disputed domain name with Complainant and its trademarked video games. Complainant further argues that it holds unregistered rights in the trademark GTA:V because, even though the video game of that name has not yet been released and sold to the public, it has been so widely advertised and promoted that such use creates rights in the unregistered trademark. Complainant contends that the disputed domain name is confusingly similar to its GTA:V unregistered trademark.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized Respondent to utilize its GTA mark; (2) Respondent adopted the disputed domain name to falsely create an impression of association with Complainant; (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services (as Respondent has apparently use the disputed domain name in connection with a “phishing scheme”); (4) Respondent has not acquired any trademark rights in the disputed domain name, and has not been commonly known by the disputed domain name; and (5) Respondent has not made legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers, in that Respondent has used the disputed domain name to misappropriate and piggyback on the goodwill associated with Complainant’s well-known trademark.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has intentionally attempted to attract, 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; (2) Respondent’s use of the disputed domain name in a phishing scheme is further evidence of bad faith; and (3) Respondent is attempting to foreclose Complainant from promoting its products on the Internet, willfully misappropriating Complainant’s exclusive property and disrupting its business.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. The express courier delivery service engaged by the Center reported successful delivery of the Complaint to the physical address provided in Respondent’s registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence to establish rights in the trademark GTA based on use in commerce in the United States and registration at the USPTO (see Factual Background, supra).⁴ Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has rights in the trademark GTA in the United States.

Complainant has further argued that it has rights in the unregistered trademark GTA:V based on use in commerce in the United States in the sense of pre-release advertising and promotion of the series title. Because Complainant’s rights in the trademark GTA are sufficient for a finding of confusing similarity with the disputed domain name, the Panel need not make a determination as to any unregistered trademark rights in GTA:V and refrains from doing so (without expressing any opinion regarding such alleged trademark rights).

Respondent registered the disputed domain name <gtavbeta.org>. To that group of Internet users familiar with video game titles, the term “gtav” has a definite meaning associated with Complainant and its GTA series, as the fifth game in the series. This meaning is illustrated by extensive Internet search results referring to Complainant’s video game product returned from entering “gtav” (or “gta5”) in a search engine. As Complainant has noted, the term “beta” is a commonly understood reference to pre-release testing versions of computer software, and is well known by the public. Respondent has added a roman numeral commonly denoting a series sequel and a common reference for pre-release software to Complainant’s GTA trademark. The additional terms do not create a term that is distinct, from an Internet user standpoint, from Complainant’s GTA trademark. Moreover, the term “gtavbeta” creates Internet user confusion regarding association with Complainant’s trademark and product.⁵ The Panel determines that the disputed domain name is confusingly similar to Complainant’s GTA trademark.

The Panel determines that Complainant holds rights in the trademark GTA and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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. ” (Policy, paragraph 4(c))

Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized Respondent to utilize its GTA mark; (2) Respondent adopted the disputed domain name to falsely create an impression of association with Complainant; (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services (as Respondent has apparently use the disputed domain name in connection with a “phishing scheme”); (4) Respondent has not acquired any trademark rights in the disputed domain name, and has not been commonly known by the disputed domain name, and; (5) Respondent has not made legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers, in that Respondent has used the disputed domain name to misappropriate and piggyback on the goodwill associated with Complainant’s well-known trademark. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Complainant presented some evidence regarding use by Respondent of the disputed domain name. The Panel used the “Wayback Machine Internet Archive” to identify a webpage addressed by the disputed domain name that requested Internet users to undertake a series of steps (see Factual Background, supra) as a condition of obtaining a free “beta key” to “GTA:V” (and also referring to availability of the video game software itself). Complainant has indicated that it does not make available beta versions of its GTA series video game software. While it is not entirely clear to the Panel what Respondent was attempting to accomplish with its webpage associated with the disputed domain name, by offering an allegedly “legal” product (via a “key”) using Complainant’s trademark – while the product was not in fact associated with Complainant – it appears that Respondent was in some manner attempting to take unfair advantage of Internet users, and was misusing Complainant’s trademark. Such use does not establish rights or legitimate interests in the disputed domain name.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that:

“(ii) [respondent has] 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 [respondent has] engaged in a pattern of such conduct; or…or (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s ] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

Here, the Panel finds that Respondent registered and used the disputed domain name to intentionally attract Internet users to its website by creating confusion regarding Complainant acting as source, sponsor, affiliate or endorser of that website. By offering a supposedly “legal and valid” beta key (and software) for Complainant’s forthcoming video game, Respondent implied that Complainant supported its endeavor. The Panel assumes that Respondent had some intent for commercial gain in requesting Internet users to share its website and “like” its Facebook page. Even if the precise commercial intent is not self-evident, under circumstances such as those here – namely, Respondent offering a beta key to a product that is not lawfully available – the Panel considers Respondent’s registration and use of the disputed domain name to constitute bad faith. The list of bad faith elements set out in paragraph 4(b) of the Policy is illustrative, not exhaustive.

The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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, <gtavbeta.org>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: March 17, 2013

¹ Complainant provided the URL reference to posts at “http://www.youtube.com/user/mw2ownagedudes" (Panel visit of March 16, 2013). It does not appear that the statement concerning the free beta key on the chat room postings originated with the individuals posting comments, since the identical statement accompanied posts by several different persons.

² Complainant might better have provided this evidentiary support, and the Panel somewhat reluctantly undertook and provides the results of the archive search. However, because the archive evidence is useful to more concretely establishing the use actually made of the disputed domain name, the Panel refers to it (and it is consistent with the evidence provided by Complainant).

³ Panel visit of March 17, 2013.

⁴ Complainant has provided evidence sufficient to establish rights in the trademark GRAND THEFT AUTO, but because this trademark is not necessary from the standpoint of establishing confusing similarity with the disputed domain name, the Panel does not specifically reference it for that purpose.

⁵ Use of the gTLD “.org” is not relevant to an assessment of confusing similarity under the Policy in circumstances such as those here.