The Complainant is Rockstar Games, United States of America, represented by Davis & Gilbert LLP, United States of America.
The Respondent is Juan Carlos Azurdia, Guatemala.
2. The Domain Name and Registrar
The disputed domain name <wwwrockstargames.com> is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2007. On October 23, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On October 23, 2007, Capitoldomains, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 7, 2007. 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 November 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2007.
The Center appointed Philip N. Argy as the sole panelist in this matter on December 6, 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 following facts are taken from the Complaint and, in the absence of a Response, remain uncontested.
The Complainant is a Delaware corporation based in New York that develops and publishes computer software. Its parent company, Take Two Interactive Software Inc., holds trademarks in the United States of America for, inter alia, the mark ROCKSTAR GAMES (U.S. Reg. No. 2,456,387). That mark was registered on May 29, 2001.
The disputed domain name <wwwrockstargames.com> was created on October 3, 2002. At the time the Complaint was prepared, the disputed domain resolved to a website offering, inter alia, pop-up advertising and links to various computer games and computer game products.
5. Parties’ Contentions
A. Complainant
The Complainant argues that it has rights to the ROCKSTAR GAMES trademark arising from its United States of America trademark registrations. Since 1999 the ROCKSTAR GAMES trademark has been used extensively around the world to advertise its computer software products including the well-known video game series “Grand Theft Auto”. Complainant also owns the <rockstargames.com> domain name, which it registered in 1998.
The disputed domain name is almost identical to the Complainant’s trademark, with the only differences being the deletion of the space between “rockstar” and “games”, and the addition of the prefix “www”. Previous UDRP decisions have found the mere addition of the prefix “www” is insufficient to avoid confusing similarity.
The Respondent has never been authorized by the Complainant to use its trademark. The Respondent has never used the domain name <wwwrockstargames.com> in connection with a bona fide offering of goods and services. The Respondent has never been commonly known by the domain name <wwwrockstargames.com> or the mark ROCKSTAR GAMES. The disputed domain name is being used in a confusing and deceptive manner to mislead Internet users searching for the Complainant’s website.
The Respondent’s registration of a domain name consisting of the Complainant’s famous ROCKSTAR GAMES mark and the use of the corresponding website to sell advertising indicates that the Respondent has registered and is using the disputed domain name with the bad faith intention to capitalize on the value and goodwill of the ROCKSTAR GAMES mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the disputed domain name to be transferred to the Complainant, the Complainant must have demonstrated, in accordance with paragraph 4(a) of the Policy, that:
(i) the disputed domain name 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 in respect of the domain name; and
(iii) the Respondent has registered and used the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark ROCKSTAR GAMES. These rights have been established by the US registered trademark ROCKSTAR GAMES (U.S. Reg. No. 2,456,387). The registered mark is actually owned by the Complainant’s corporate parent Take Two Interactive Software Inc. rather than the Complainant. The Panel relies on Miele, Inc. v. Absolute Air Cleaners and Purifiers,
WIPO Case No. D2000-0756; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,
WIPO Case No. D2003-0796; and Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,
WIPO Case No. D2003-0624, all of which have found that a complainant can have rights in a trademark when the registered trademark is held by its corporate parent or subsidiary. In this case, the Complainant is a wholly owned subsidiary of Take Two Interactive Software Inc. and has been using Take Two’s mark for 7 years as its name and trademark. The Panel is satisfied as to Complainant’s rights in the mark.
The main difference between Complainant’s trademark and the disputed domain name is the “www” that precedes “rockstargames”. As spaces are not permitted in domain names, there is no other distinguishing feature of the Respondent’s domain name which is capable of differentiating it from the Complainant’s domain name.
The disputed domain name is also similar, but not identical to, the domain name <rockstargames.com> registered by the Complainant, which reflects its rights in its mark ROCKSTAR GAMES.
Whilst no longer mandatory with most modern browsers, the use of “www.” in front of a domain name is invariable global practice when typing a URL into a browser. Historically it was required to designate the world wide web part of the Internet.
In the present case, the Internet user would merely have to omit a single dot, rather than misspell the trademark element of the domain name in order to find itself at Respondent’s website. This case is analogous to CSC Holdings, Inc. v. Elbridge Gagne,
WIPO Case No. D2003-0273, which found that the addition of the prefix “www” to the mark does not prevent a finding of confusing similarity.
Based on the above circumstances, the Panel is quite satisfied that the first element of paragraph 4(a) of the Policy has been proven.
B. Rights or Legitimate Interests
The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant makes it possible for the Panel to conclude that the Respondent has never been licensed by the Complainant, never had any connection to the Complainant and, in general, lacks any rights or legitimate interests in the disputed domain name. The Panel could find no justification, right or legitimate interest on the part of the Respondent to the words or trademarks comprising the domain name. The Respondent cannot be making a legitimate non commercial or fair use of the domain name as the website is being used for a commercial purpose by way of advertisements, links and sale offers (whether or not conducted directly by the Respondent). There has been no evidence produced to indicate that the Respondent is known by the name “rockstar” or “games” or “rockstar games”.
The Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website offering advertisements as well as links to Playstation video games, Rockstar Games and credit and dating sites. The website also contains references to “Grand Theat Auto 3”, a misspelling of the Complainant’s popular “Grand Theft Auto 3” game. These links are in the form of “Sponsored links” which provide revenue to the website owner every time an Internet user clicks on these links.
The Panel finds that at the time of registration the Respondent was aware of the Complainant’s trademark due to the Complainant’s reputation, as well as nature of the domain name registered. The fact that the domain name redirects to a website that makes reference to computer games and the Complainant’s Grand Theft Auto 3 game indicates that the Respondent is aware of the Complainant. By using the disputed domain name for commercial purposes, the Respondent has intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s mark as to the sponsorship of its site. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under paragraph (4)(b)(iv) of the Policy.
The Panel is satisfied that the third element of paragraph 4(a) of the Policy has been proven.
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 name, <wwwrockstargames.com> be transferred to the Complainant.
Philip N. Argy Sole Panelist
Dated: December 20, 2007
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