WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-0790

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 Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <rockstagames.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, 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 6, 2020, 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 on April 7, 2020.

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 of the Complaint, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020.

The Center appointed Zoltán Takács as the sole panelist in this matter on May 12, 2020. 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 language of this administrative proceeding is English, that being the language of the Registration Agreement.

4. Factual Background

The Complainant is a leading worldwide publisher, developer and distributor of interactive entertainment software and accessories, including video and computer games, online interactive video games, interactive video and online entertainment services.

The Complainant owns a global portfolio of trademarks consisting of or comprising the term ROCKSTAR GAMES, including the United States Trademark Registration No. 2456387 for the word mark ROCKSTAR GAMES registered since May 29, 2001, for goods of class 9 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks.

Since December 1, 1998, the Complainant owns the domain name <rockstargames.com>, which links to its principal website.

The disputed domain name was created on November 4, 2002, and has been used to redirecting Internet users to a website purporting to promote and offer the same goods and services that are marketed and sold by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name incorporates its ROCKSTAR GAMES nearly entirely and is therefore confusingly similar to it. The only difference between the disputed domain name and the Complainant’s ROCKSTAR GAMES trademark is the omission of the single letter “r” in the term “rockstar”.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.

The Complainant claims that the disputed domain name was registered and is being used in bad faith. The disputed domain name is on its face a typosquatting registration and it redirects dynamically to a website selling goods similar to those of the Complainant by third parties unaffiliated with the Complainant, or to a site bearing the Complainant’s marks and purporting to sell the Complainant’s own best-selling product (Grand Theft Auto). The Complainant also contends that the Respondent has history of registering domain names containing misspelled trademarks of others.

The Complainant requests that the disputed domain names be transferred from the Respondent to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.

It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:

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

(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.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark.

It has been a consensus view among previous UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant produced evidence of having registered rights in the ROCKTAR GAMES trademark.

For the purpose of this administrative proceeding the Panel finds that the United States Trade Mark Registration No. 2456387 for the word mark ROCKSTAR GAMES satisfies the requirement of having trademark rights for the purpose of the Policy.

Having determined the presence of the Complainant’s trademark rights in the ROCKSTAR GAMES trademark, the Panel next assesses whether the disputed domain name <rockstagames.com> is identical or confusingly similar to the Complainant’s ROCKSTAR GAMES trademark.

According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.

The disputed domain name <rockstagames.com> is confusingly similar to the Complainant’s ROCKSTAR GAMES trademark, which is recognizable within the disputed domain name. The only difference is omission of the single letter “r” in the term “rockstar” in the disputed domain name.

The Panel considers this obvious misspelling of the Complainant’s ROCKSTAR GAMES trademark a clear example of typosquatting and finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

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

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the ROCKSTAR GAMES trademark.

The Complainant has never authorized the Respondent to use its ROCKSTAR GAMES trademark in any way, and its prior rights in the ROCKSTAR GAMES trademark precede the date of registration of the disputed domain name.

According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds, also noting the circumstances described below as regards bad faith, that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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 disputed domain name is phonetically and visually nearly identical to the Complainant’s ROCKSTAR GAMES trademark, provides access and links to a website offering competing products or even those of the Complainant’s ROCKSTAR GAMES products (namely the best-selling Grand Theft Auto) and using the Complainant’s mark without any authorization or consent of the Complainant.

This, in the Panel’s view not only demonstrates that the Respondent knew of the Complainant’s ROCKSTAR GAMES trademark when registering the disputed domain name, but also the Respondent’s obvious intent to deceive Internet users into believing that the corresponding websites at issue are in some way associated with the Complainant and its ROCKSTAR GAMES trademark and associated games.

The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain Internet users to its websites (or websites under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy.

The disputed domain name is a typosquatting registration and previous UDRP panels have found typosquatting, “the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors inherently parasitic and of itself evidence of bad faith” (National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseballl v. John Zuccarini, WIPO Case No. D2002-1011).

The Respondent, so far as it can be ascertained, has been involved in a number of trademark-abusive typosquatting domain name registrations (e.g. Facebook, In. and Instagram, LLC v. Domain Administrator, Fundacion Privacy Services Ltd., WIPO Case No. D2019-2518; FPS Networks, Inc. v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2018-2854; Andrey Ternovskiy dba Chatroulette v. Domain Administrator, Fundacion Privacy Service LTD, WIPO Case No. D2018-0979).

This in view of the Panel demonstrate a pattern of conduct by the Respondent to utilize domain names misrepresenting trademark of others without any right to do so, and is further indicative of the Respondent’s bad faith.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <rockstagames.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist
Date: May 25, 2020