The Complainant is Take-Two Interactive Software, Inc., Los Angeles, California, United States of America, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
The Respondent is John Chow, Australia.
The disputed domain name <gtavbetacodes.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 31, 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.
The Complainant is a video-game developer and publisher, which has produced and marketed since 1998 a video-game series known as “Grand Theft Auto”, or “GTA”. Details of the Complainant’s US Federal trademark registration, No 3429237 of its GTA trademark has been supplied to the Panel. To date, over 112 million units of the GTA series have been sold, and details of extensive use and advertising of the Complainant’s GTA mark have been supplied to the Panel.
The disputed domain name was registered on December 22, 2012.
The Complainant contends that, in addition to its registered trademark rights, it has extensive common law rights through world-wide use of its GTA trademark, and that the disputed domain name is confusingly similar to its GTA trademark, merely adding the descriptive or generic elements “v” and “beta codes” to its GTA trademark.
The Complainant states that it has never authorized the Respondent to use its GTA trademark, and alleges that none of the “safe harbour” provisions of paragraph 4(c) of the Policy applies to the Respondent.
The Complainant contends that the disputed domain name was registered and is being used in bad faith, in particular that the Respondent has acted in bad faith because he has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names of the Respondent be transferred to the Complainant or be cancelled:
(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.
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
It is well-established in decisions under the UDRP that the addition of non-distinctive and descriptive elements to an established trade mark is insufficient to avoid a finding of confusing similarity between the complainant’s trade mark and the disputed domain name (the decision in F. Porsche AG v. Glenn Stefan Karlsson-Springare, WIPO Case No. D2011-1727 and many others). The Panel agrees with this well-established view, finds that “v” and “beta codes” are obviously non-distinctive and descriptive elements in the circumstances of the present case, and, consequently, finds that the Complainant has satisfied the test set out in paragraph 4(a)(i) of the Policy.
Where the respondent has failed to demonstrate rights or legitimate interests in the domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel is of the view that, in the case of an established trade mark, the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel accepts from the evidence presented that the Complainant’s GTA trademark is established, and considers that the circumstances of the present case, in which it seems to him that the disputed domain name was deliberately “engineered” to appear to emanate from the Complainant in connection with the Complainant’s series of GTA games, make it appropriate to find that the disputed domain name was registered in bad faith.
The Respondent is operating a “gaming” website under the disputed domain name. The Panel is of the opinion that the Respondent has deliberately “engineered” the disputed domain name to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, contrary to the provisions of paragraph 4b(iv) of the Policy. Accordingly, the Panel finds that the disputed domain name has been 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 <gtavbetacodes.com> be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: June 14, 2013