WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software, Inc. v. Joaquin Gomez

Case No. D2013-0666

1. The Parties

The Complainant is Take-Two Interactive Software, Inc. of Los Angeles, California, United States of America, represented by Mitchell, Silberberg & Knupp LLP, United States of America.

The Respondent is Joaquin Gomez of Lisboa, Portugal.

2. The Domain Name and Registrar

The Domain Name <gta5beta.org> (“Domain Name”) is registered with Active Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 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 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.

The Center appointed William P. Knight as the sole panelist in this matter on May 16, 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

The Complainant is an American corporation that has, through a wholly-owned subsidiary, established a worldwide reputation for its popular series of video games called “Grand Theft Auto”, abbreviated to “GTA”, in which four versions have been published, and the fifth has been announced to be published in the near future. The Complainant is the owner of the registered trademark GTA in a number of countries (“GTA trademark”). The Complainant’s subsidiary, Rockstar Games Inc., also owns numerous domain names that relate to the Grand Theft Auto series, including <gta5.com>.

The Domain Name was created on February 11, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to the GTA trademark, notwithstanding the inclusion of the additional number “5” and word “beta”. It is contended that both of these additions are generic words that are not sufficient to render the Domain Name distinct from the GTA trademark. The Complainant also claims an independent reputation and goodwill in the sign “GTA5”, notwithstanding that the fifth version of Grand Theft Auto has not yet been offered to the public.

According to the Complainant, there was a website in use under the Domain Name at the date of the Complaint (the “Website”), which purported to offer a “beta version” of an unpublished fifth version in the GTA series, referred to as “GTA 5”, though no supporting evidence has been provided to confirm this.

The Complainant states that it has not authorized the use of the Domain Name by the Respondent.

The Complainant further states that a beta version of the Grand Theft Auto game does not exist.

The Complainant speculates that the Website existed solely to collect users’ personal information for exploitation in some manner. Again, no supporting evidence has been provided for this assertion.

The Complainant contends that the Respondent has intentionally created a likelihood of confusion with the GTA trademark in order to attract Internet users for commercial gain. The Complainant argues that the Respondent intends to capitalize on confusion as to the source, sponsorship or affiliation of the Respondent’s website. Additionally, the Complainant claims that the Respondent has made a calculated attempt to disrupt the promotion of the Complainant’s products on the Internet.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2 The Respondent has no rights or legitimate interests in respect of the Domain Name; and

3. The Domain Name has been registered and is being used in bad faith.

Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements.

The Respondent’s default does not automatically result in a determination in favour of the Complainant. However, the Panel may draw appropriate inferences from the Respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true).

A caution to remember, however, is that paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding; see paragraph 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

That said, it is permissible for the Panel to undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the Domain Name in order to obtain more information about the Respondent and the use of the Domain Name, consulting a repository such as the Internet Archive (at www.archive.org) in order to obtain an indication of how the Domain Name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases. The Panel may also rely on personal knowledge; see paragraph 4.5 of WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has trademark rights in the GTA trademark which are sufficient for the purposes of the Policy. The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s GTA trademark. The Panel is satisfied that the dominant component of the Domain Name is the letters “gta”, which has gained a significant reputation in the field of video games and related products. The numeral “5” is simply a denominator of the fifth version of the Complainant’s product, as is apparent from the Respondent’s use of it alone, as well as the use of it by the Complainant’s subsidiary. The word “beta” and the top-level domain “.org” in the Domain Name do not carry any distinguishing weight.

The first element of the UDRP is satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Respondent was certainly aware of the Complainant’s established reputation and trademark rights at the time of registering the Domain Name, since the Respondent was using the Domain Name specifically to refer to the fifth version of the Grand Theft Auto game.

In the absence of any explanation to the contrary by the Respondent, the Panel also accepts that the Respondent has not been granted authorization from the Complainant to use its GTA trademark in the Domain Name.

It would be a legitimate use of a complainant’s trademark to offer the genuine goods of the complainant, as does a reseller or distributor, in the circumstances set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. However, in this case, in the absence of any investigation by and evidence from the Complainant to explain definitively what the Respondent was doing, the Panel discerns only the following possibilities:

(a) the Respondent is offering the genuine Grand Theft Auto version 5 software, presumably a beta version, notwithstanding the Complainant’s denial of its existence. If so, however, the making available of a copy for download would plainly be a copyright infringement in nearly all, if not all, countries in the world and this could never amount to a legitimate interest in the Complainant’s trademark;

(b) the Respondent is offering something other than Grand Theft Auto version 5, in which case such deceit equally could not amount to a legitimate interest in the Domain Name incorporating Complainant’s trademark;

(c) the Respondent is doing something else, perhaps dishonestly collecting personal information for spamming or some other purpose, as the Complainant speculates, which is also not a legitimate use of the Domain Name incorporating the Complainant’s trademark.

In the circumstances, the Panel therefore concludes that the Respondent does not have rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. The Complainant has sought to rely predominately on paragraph 4(b)(iv), as well as on paragraph 4(b)(iii).

In this case, the Complaint does not do more than describe what it says was the Website with a few words and does not even provide a screenshot of that website at the date of preparing or filing the Complaint in support of its description.

On the date of this determination, there was no Website. The Domain Name is not in use. The Internet Archive at “www.archive.org” shows that the Website was only in use for a short period between late 2011 and early 2012 and it appears only ever to have resolved to “www.gta5beta.net”. The WhoIs record relating to the latter domain name indicates that it was registered on February 11, 2012 in the name of a resident of the United Kingdom. In the short period that it has taken to write this determination, even this website has disappeared, but when it existed, it was not as the Complainant described the Website, at least insofar as seeking the entry of personal information. Rather, it was similar to that observed by this Panel in Take-Two Interactive Software, Inc. v. Amarildo Domi, WIPO Case No. D2013-0608 where the download was offered unconditionally, though in the current case it was said to be offered as an .EXE file from the website at <gtabeta.net>.

It may be of significance that the website at the domain name <gtabeta.net> had a simple choice of languages between English and Russian and that its server was also based in the Russian Federation. Be that as it may, it appears a pattern is emerging, from the prior decisions Take-Two Interactive Software, Inc. vFundacion Private Whois, WIPO Case No. D2013-0586and Take-Two Interactive Software, Inc. v. Amarildo Domi, supra, that leads to a conclusion that all three domain names, along with <gtabeta.net> are registered by the same person, entity or group of people and the names and contact details of all registrants are fictitious. It is unclear what the purpose of those behind this activity may be, other than to lead the Complainant on a merry dance, but, whatever it is, it is clearly registration and use in bad faith.

An illegitimate purpose for both registration and use of the Domain Name can be found for these reasons, as well as those set out in the previous section concerning rights and legitimate interests. As such, a formal conclusion as to the Respondent’s exact purpose is not required. The Panel is prepared to conclude that the Respondent registered and has used the Domain Name in bad faith. The Domain Name is not currently in use, however, based on the Respondent’s past conduct, a finding of current use in bad faith is justified.

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 Domain Name <gta5beta.org> be transferred to the Complainant.

William P. Knight
Sole Panelist
Date: May 18, 2013