WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Take Two Interactive Software Inc. v. Ho Nim a/k/a Lu Lan Case No. D2010-0458 1. The Parties
Complainant is Take Two Interactive Software Inc. of New York, New York, United States of America, represented internally.
Respondent is Ho Nim a/k/a Lu Lan of Shanghai, Pudong, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , and are registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2010. On March 25, 2010, the Center transmitted by email to A, Inc., a request for registrar verification in connection with the disputed domain names. On March 26, 2010, A, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 31, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 6, 2010. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 30, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 5, 2010. 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
Complainant Take Two Interactive Software Inc. (“Take Two”) is a corporation duly organized and existing under the laws of Delaware. It was formed in 1993 and is one of the world's leading publishers, developers and distributors of interactive entertainment products, including video games and related software. Take Two develops and publishes some of the most successful, popular, and best-selling titles in the industry.
One of the leading video game series produced by Take Two is Grand Theft Auto, which is commonly referred to as GTA by the public, the press and by Complainant. The GTA video game series is composed of several of the most popular and fastest selling video games of all time. Starting with Grand Theft Auto, which was released in 1998, the series has included GTA London, GTA 2, Grand Theft Auto III, Grand Theft Auto: San Andreas, Grand Theft Auto: Vice City, Grand Theft Auto IV, Grand Theft Auto: Chinatown Wars, Grand Theft Auto: The Lost and the Damned, and Grand Theft Auto: The Ballad of Gay Tony.
Take Two also produced a groundbreaking video game titled BioShock first announced on October 8, 2004, BioShock was released on August 21, 2007.
Take Two is the sole and exclusive owner of the federally-registered trademarks: GRAND THEFT AUTO (and design) (Registration No. 2,148,765), which it filed with the United States Patent and Trademark Office (“USPTO”) on September 16, 1996, was registered on April 7, 1998; GRAND THEFT AUTO: SAN ANDREAS (Registration No. 2,993,273), which was filed with the USPTO on December 17, 2003, and registered on September 6, 2005; VICE CITY STORIES (Registration No. 3,345,871), which it filed with the USPTO on March 21, 2006, and subsequently registered on November 27, 2007; GRAND THEFT AUTO VICE CITY, which claimed first use in May 24, 2002, filed with the USPTO on November 19, 2002, and later registered on December 14, 2004; GTA (Registration No. 3,439,237), which claimed first use as of September 30, 1999, filed with the USPTO on March 29, 2007, and subsequently registered on June 3, 2008; and BIOSHOCK (Registration No. 3,410,583), which was filed with the USPTO on November 16, 2005, and registered on April 8, 2008.
Complainant also owns a registration for the BIOSHOCK mark with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”) (Trade Mark No. 006247969) which was filed on September 7, 2007, and registered on September 4, 2008.
Respondent registered the disputed domain names on October 15, 2009; on November 16, 2009; on December 9, 2009; on November 10, 2009; on October 6, 2009; on November 30, 2009; and on November 29, 2009. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are identical to the famous GRAND THEFT AUTO, GRAND THEFT AUTO: SAN ANDREAS, GRAND THEFT AUTO VICE CITY, VICE CITY STORIES, GTA, and BIOSHOCK trademarks owned by Complainant. Complainant asserts that its trademarks were both famous and distinctive at the time that Respondent registered the disputed domain names.
Complainant also argues that the mere addition of a generic word or number to a registered trademark has consistently been deemed insufficient to avoid confusing similarity in cases decided under the Policy and involving circumstances similar to those at present.
Additionally, in the case of the domain name, Complaint asserts that the inclusion of Complainant's marks in the domain name differs from Complainant's protected marks GRAND THEFT AUTO and GRAND THEFT AUTO VICE CITY STORIES, respectively, by only one letter.
Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain names, that Respondent has not prepared or used the disputed domain names in connection with any bona fide offering of goods or services related to the domain names, is not commonly known by the disputed domain names, and has not made any noncommercial or fair use of the disputed domain names.
Complainant alleges that Respondent is using the disputed domain names to divert users to third-party commercial websites for profit and that Respondent is using the disputed domain names to host portal websites featuring a number of commercially sponsored advertisements and hyperlinks that direct website users to other sites which sell products that compete with Complainant's own products.
Complainant contends that Respondent is taking advantage of the trademark value of the disputed domain names and that Complainant's GRAND THEFT AUTO, GRAND THEFT AUTO: SAN ANDREAS, GRAND THEFT AUTO VICE CITY, VICE CITY STORIES, GTA, and BIOSHOCK marks are distinctive trademarks and not merely generic or common terms.
Complainant also contends that using a landing page featuring commercially sponsored links at a generic domain name is only legitimate if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”, which would not be the case.
Further, Complainant asserts that a number of Panel decisions have interpreted paragraph 2 of the Policy to require that for a domain name registrant to have any right or legitimate interest in a domain name, the registrant must have made “some good faith effort to avoid registering and using domain names corresponding to trademarks.”
Complainant alleges that, in light of the widespread international fame and use of the GRAND THEFT AUTO, GRAND THEFT AUTO: SAN ANDREAS, GRAND THEFT AUTO VICE CITY, VICE CITY STORIES, GTA, and BIOSHOCK marks by the news media, Complainant, and the general public to refer to Complainant and Complainant's goods; not to mention Complainant's numerous registrations of the marks with the USPTO and the OHIM, it is highly likely that even a cursory search, of either the publicly available information on file with the relevant trademark registration offices or the Internet would have uncovered evidence of Complainant's ownership of these protected marks, and that the fact that Respondent registered the disputed domain names in spite of this fact is proof that Respondent either neglected to conduct even such a cursory search, or that Respondent conducted such a search and was apprised of Complainant's rights and chose to disregard them.
Complainant further contends that Respondent's actions also constitute bad faith under paragraph 4(b)(iv) of the Policy. Respondent used the disputed domain names to host a website offering unauthorized, free copies of Complainant's games, as well as websites with commercial advertising links for products related to, and in direct competition with Complainant's famous Grand Theft Auto, Grand Theft Auto: San Andreas, Grand Theft Auto Vice City, Vice City Stories, GTA, and BioShock video games. Complainant alleges that such use does not constitute a bona fide offering of goods or services, and is not a legitimate non-commercial or fair use.
Furthermore, Complainant argues that Respondent used the disputed domain names to host websites with commercial advertising links for products related, unrelated, and in competition with Complainant's famous Grand Theft Auto, Grand Theft Auto: San Andreas, Grand Theft Auto Vice City, Vice City Stories, GTA, and BioShock video games and that this is additional evidence that the domain names were registered without any bona fide intent to make good faith use of the domain names.
In addition, Complainant alleges that Respondent has used one of the Domain Names to offer website users the ability to download for free a full, unauthorized copy of Complainant's Grand Theft Auto: San Andreas video game with its copyright security measure disabled. Respondent has not only appropriated the trademark rights of the Complainant, but has also improperly, and in bad faith, used this domain name to offer “pirated” copies of the Complainant's software.
Complainant informs that the disputed domain names are currently registered under the name Ho Nim of Shanghai, China. Until very recently, they were registered under the name Lu Lan also using the same address in Shanghai, China.
Complainant asserts that it is clear from the registration of the same domain names and the identical registration addresses that these entities are one and the same and Respondent changed names on its registrations to deliberately frustrate the enforcement of the Policy and the goals of proceedings such as this. This provides further evidence that Respondent's actions constitute bad faith under paragraph 4(b)(iv) of the Policy.
Complainant has also argued that that while no single factor is de facto proof of bad faith, the presence of several factors which would exist if a respondent were engaging in cybersquatting support a finding that a respondent registered and is using the disputed domain names in bad faith.
Complainant also supports that Respondent has a history of cybersquatting, having registered other third-party trademarks in the past, and in at least four instances, having been found by a previous UDRP panel to have registered and used a domain name in bad faith.
Finally, Complainant concludes that, based on the evidence contained in this Complaint indicating that Respondent is a cybersquatter that will not transfer an improperly registered domain name voluntarily upon request by the owner of a protected mark, Complainant did not, prior to the filing of this Complaint in accordance with the Rules, provide Respondent with advance notice of its intention to bring this case in the form of a cease-and-desist letter or transfer demand. Complainant refrained from affording Respondent such advance notice also to prevent Respondent from immediately employing further cyberflight tactics or “privacy” measures which would only serve to further frustrate the efforts of this proceeding with respect to those domain names still registered to Respondent without any alias or anonymization. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain names are 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 domain names; and (iii) the domain names have been registered and are being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to Complainant's GRAND THEFT AUTO, GRAND THEFT AUTO: SAN ANDREAS, GRAND THEFT AUTO VICE CITY, VICE CITY STORIES, GTA, and BIOSHOCK trademarks.
The disputed domain name differs from Complainant's registered BIOSHOCK mark only in the addition of the generic expression “fanclub”.
The disputed domain names ; and differ from Complainant's GRAND THEFT AUTO, GRAND THEFT AUTO: SAN ANDREAS registered marks only in the addition of the word “cheat” or “cheats”.
The disputed domain name differs from Complainant's GRAND THEFT AUTO VICE CITY and VICE CITY STORIES registered mark only in the addition of the generic expression “cheat” and in the modification of letter “I” for the letter “A” in “city”.
The disputed domain name differs from Complainant's registered GTA mark only in the addition of the generic expression “racinggames”.
The disputed domain name differs from Complainant's registered GTA and VICE CITY STORIES mark in that the domain name includes “online” and excludes “stories”.
The Panel finds that the differences summarized above are not enough to characterize the disputed domain names as being distinct from Complainant's trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
Furthermore, the Panel finds that adding generic or common expressions, such as “fanclub”, “cheat”, “racinggames” and “online” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the mentioned expressions do not serve any distinguishing function and can even increase the possibility of confusion. The Panel notes in passing that the use of the expression “fanclub” could be understandable if the domain name was, indeed, connected with a fanclub activity, which is not the case here, where the website under domain name only seems to host pay-per-click advertisings.
The Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the UDRP Complaint was filed, the domain names provided, in part, pay-per-click advertisings and links to websites that were in direct competition with Complainant.
Moreover, the domain names, as of the date of this decision, still resolve to a page that displays pay-per-click ads and links to Complainant's competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards aka William Moore, NAF Claim No. FA132439 (finding that the respondent's use of complainant's marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant's competitors, was not a bona fide offering of goods or services).
The Panel finds that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's 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 the respondent's site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain names in bad faith.
Complainant's allegations of bad faith are not contested. The trademark registrations of record confirm Complainant's allegations that it had long been using its GRAND THEFT AUTO, GRAND THEFT AUTO: SAN ANDREAS, GRAND THEFT AUTO VICE CITY, VICE CITY STORIES, GTA, and BIOSHOCK trademarks when the disputed domain names were registered. Moreover, Complainant submitted consistent evidence that its trademarks are widely known. The Panel finds persuasive Complainant's allegation that the Respondent must have been aware of the Complainant's rights in the marks and, further that Respondent knowingly infringed the Complainant's trademarks when it registered the subject domain names.
The Panel also considers Respondent's history of cybersquatting, having registered other domain names that reflect third-party trademarks in the past, and in at least four instances, having been found by a previous UDRP panel to have registered and used a domain name in bad faith.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant's known trademark to attract users to Respondents' websites where pay-per-click ads and links to competing websites are offered. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondents' websites or of a product or service on Respondents' websites.
At the time the Complaint was filed and at the time of this Decision, the domain names resolve to pages that offer visitors pay-per-click ads and links to sites of other companies, including Complainant's competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent's registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants' website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion”). See also E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly the Panel finds that Complainant has made out bad faith registration and use of the disputed domain names by Respondent. 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 names, , , , , , and be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: May 19, 2010
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