Complainant is Take-Two Interactive Software, Inc. (hereinafter referred to as the "Complainant") of New York, New York, United States of America, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
Respondent is Pimp Squiggles of Beverly Hills, California, United States of America.
The disputed domain name <officialgta5beta.com> (hereinafter the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2013. On May 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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”).
On May 7, 2013, the Center received an email communication from Respondent stating “I don't know whats this is about, but I am not agreeing to anything.” On May 8, 2013, the Center acknowledged receipt of this email communication indicating the Complaint was being reviewed and would be notified to Respondent formally upon completion of review. On May 10, 2013, there were several email exchanges between the parties where the Center was copied. The Center acknowledged receipt of these on May 13, 2013.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013.
On May 15, 2013, the Center received an email communication from Respondent stating “I have no idea what any of this means. Can you explain it to me in layman terms? I spoke with [the Complainant’s Representative and he told me I don't have to do anything if I didn't oppose the domain being transferred”. On the same day, the Center acknowledged receipt of this email communication reiterating the Response due date and guidelines for filing a Response can be found at the Center’s website. The Center further pointed out as a neutral dispute resolution provider, the Center may answer questions relating to such matters as filing requirements and applicable procedure, however cannot provide legal advice. In the same email, the Center also indicated if the parties were thinking to settle the dispute, the Complainant should send a request for suspending the proceedings for the purpose of settlement between the parties.
The Center’s did not receive any suspension request by the Response due date. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on June 5, 2013.
The Center appointed James H. Grossman as the sole panelist in this matter on June 13, 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 Complaint states that Complainant is a Delaware corporation, a global leader in the development, marketing and publishing of interactive entertainment for consumers. Among other products, Complainant develops and publishes video games designed for multiple platforms, including personal computers, mobile phones, "iOS" devices (e.g. iPhone, iPad) handheld gaming units (e.g. Sony Playstation Portable, Nintendo DS), and other gaming devices delivered through physical retail, digital download, online platforms and cloud streaming services. Complainant's wholly-owned subsidiary Rockstar Games, Inc. produces, among other games, GRAND THEFT AUTO or GTA, both of which names are registered trademarks as described below. Variations on this interactive movie-like narrative which began in 1998 has been updated with new versions until development and publication of its game Grand Theft Auto IV takes about 30 hours to play through.
Grand Theft Auto is one of the most successful video game series of all time with its prior installment in the series, Grand Theft Auto IV, selling 20 million units alone and with over 112 million units of the overall series having been sold.
Complainant is the sole and exclusive owner of the United States federally registered trademark GRAND THEFT AUTO (and design) registered on April 7, 1998 (Registration No. 2,148,765). Complainant is also sole and exclusive owner of the United States federally registered trademark GTA pursuant to Registration No. 3,439,237 registered on June 3, 2008. Complainant's wholly owned subsidiary owns numerous domain names related to the Grand Theft Auto series including <grandtheftautov.com> and <gta5.com>. The trademarks referred to above have been used extensively around the world in all forms of media and Complainant has spent tens of millions of dollars on advertising. When in the fall of 2011, Complainant announced the next installment in the GTA franchise - GTA: V- the first official trailer release was covered by the Wall Street Journal, Time Magazine, and others in that it was one of the most anticipated games in the world. There were nearly 140 million hits on Google search relating to the new game.
Complainant points out that the Disputed Domain Name incorporates the entirety of Complainant's trademark GTA together with slight distinctions (use of words “official” , “5” and “beta”) that do not add any significant element or change the overall impression of the mark and do not change the fact that the Disputed Domain Name is confusingly similar. Complainant states it has not authorized Respondent to use the GTA name and that Respondent has no right or legitimate interest in the Disputed Domain Name. Further Respondent is not making any legitimate noncommercial use of the Disputed Domain Name when it seeks to bring customers to a site claiming to be able to deliver a "Beta version" of Complainant's video game. Finally, Respondent has acted in bad faith in intentionally seeking to divert Internet users to his website by capitalizing on the fame of GTA mark and siphoning off Complainant's inestimable goodwill.
The Respondent did not reply to the Complainant’s contentions.
The Disputed Domain Name was registered on March 18, 2013.
In order to succeed on its Complaint, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted by failing to timely file a formal Response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 95095.
Complainant has established that it has trademark rights in GRAND THEFT AUTO and GTA. Accordingly, the only issue remaining is as to whether the Disputed Domain Name is identical or confusingly similar to the trademark. As Complainant points out, the only difference between Complainant's name are (i) the use of the number 5 (to signify the sequel GTA: V) and (ii) the use of the words “official” and “beta”. The Panel finds that the use of the words “official” and “beta” only give more credence to Complainant’s argument in that Respondent is trying to pass off the Disputed Domain Name as coming from Complainant. In the case of Microsoft Corp v. S.L. Mediaweb, WIPO Case No. D2003-0538 the panel held that “it is well established by previous UDRP panel decisions that a domain name incorporating a distinctive trademark, such as the trademark MSN in this case, in it’s entirely creates sufficient similarity between the mark and the domain name as to render it confusingly similar.” With regard to the addition of “5” in the Disputed Domain Name, the Complainant has satisfactorily dealt with this issue in several ways: (i) Complainant has been using the GTA name and mark in connection with video games since 1998, fifteen years prior to the registration date of the Disputed Domain Name; (ii) while GTA: V is not itself a registered trademark the suffix "v" is the sequel number and the dominant aspect of the mark is the registered trademark GTA; and (iii) while actual sales of product may not have taken place, cases have held that publicity prior to sales as referred to above by Complainant may be adequate to establish prior use and such advertising and promotion is sufficient to obtain rights in a mark as long as the totality of acts recreate an association of the goods and mark with the owner. In this case extensive publicity surrounding the anticipated video game is quite significant to the association with Complainant. Maryland Stadium Auth. v. Becker, 806 F.Supp. 1236 (D. Md 1992). In addition to cases cited by Complainant, see F.Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case. No. D2007-1629. The Panel agrees with the points set forth above by Complainant. The Disputed Domain Name is confusingly similar to Complainant’s trademark.
The Panel finds the first element is satisfied.
Respondent has been given no rights of legitimate interests in respect of the Disputed Domain Name by Complainant. The Panel cannot find any evidence that Respondent is offering any bona fide goods or services under the Disputed Domain Name. Respondent has misappropriated the name for his own purposes and without any concern for the legitimate trademark owner and in violation of the Policy.
Previous UDRP panels have held that when a respondent does not respond to a complaint, it can be assumed in appropriate circumstances that this respondent has no rights or legitimate interests in the disputed domain name. See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269 and AREVA v. St James Robyn Limoges, WIPO Case No. D2010-1017. If Respondent has a right or legitimate interest in the Disputed Domain Name, he surely would have responded to this Complaint.
While the overall burden of proof rests with complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring complainant to provide information primarily within the knowledge of respondent. Therefore a complainant is required only to make a prima facie case that respondent lacks rights or a legitimate interest. The Panel accepts that Complainant made a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
As Complainant has stated and with which the Panel agrees, Respondent is deceptively diverting the public to the infringing domain by improperly capitalizing on the fame of GTA mark and by siphoning Complainant’s goodwill. See Bogart, Inc. v. Humphrey Bogart Club, NAF Case No. 162770. Further Respondent is attempting to intentionally confuse Internet users for commercial gain. See Nordstrom Inc. and NIHC, Inc. v. Private Registration c/o WhoisGuardService.com, NAF Case No. 1412491. The Panel finds that, in the totality of the circumstances, the fact that the Disputed Domain Name fails to resolve to an active website does not avoid a find of registration and use of the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel also calls attention to a similar case involving this Complainant with the same final result. Take-Two Interactive Software, Inc v. Carl Wright, NA. Domain Privacy Protector Ltd, WIPO Case No. D2012-2238. Of course Respondent’s obvious intent to conceal his true identity, by using the name “Pimp Squiggles” and a likely false address of “Main Street” in Beverly Hills, California, United States are further evidence of bad faith. This is not the first time this Panel has registered its displeasure with the ability of registrars to grant domain names to obviously false applicants. It is time in this Panel’s opinion to require more of the registrars of domain names to avoid this result so that we do not have to spend the time and money in situation such as the present to return the domain name to its appropriate owner. This third element has been satisfied.
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, <officialgta5beta.com>, be transferred to Complainant.
James H. Grossman
Sole Panelist
Date: June 27, 2013