WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Rockstar Games v. Patrick Schroeder Case No. D2010-0686 1. The Parties
Complainant is Rockstar Games of New York, New York, United States of America, represented internally.
Respondent is Patrick Schroeder of Lakewood, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2010. On April 30, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 30, 2010, GoD, Inc. 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”).
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 May 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 1, 2010. The Panel finds that it was properly constituted. The Panel has submitted his 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 Panel finds the following facts to be supported by competent evidence.1 Complainant designs and markets video games, one of which is named Grand Theft Auto. Complainant owns trademarks registered in the United States Patent and Trademark Office (USPTO) for GRAND THEFT AUTO (registered April 1998) and GTA (registered June 2008).
Respondent registered the disputed domain name on July 15, 2009. The website of the disputed domain name at one time included hyperlinks to third party sites from which an Internet user could download unauthorized copies of certain of Complainant's products. At one time this website also included commercially sponsored advertisements for items related to Complainant's products or to items in competition with Complainant's products. At present the disputed domain name resolves to no website at all. 5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's USPTO-registered mark GTA, that Respondent has no rights or legitimate interest in the disputed domain name, and that Respondent registered and has used the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Jurisdiction
In any default case, the Panel must first assure itself of jurisdiction. This analysis begins with paragraph 2(a) of the Rules, which provides:
(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@; and
(C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under paragraph 3(b)(v).
Following its customary practice, the Center in this case sent a copy of the Complaint and annexes by electronic mail to Respondent at “postmaster@” and at the email address set out in the contact details provided by the Registrar. The Center simultaneously dispatched by recognized courier service a hard copy of the Written Notice to Respondent, again at the address shown in the Registrar's contact details.
The copy of the Complaint sent to “postmaster@” was returned undelivered. A delivery report of the copy of the Complaint sent to the email address set out in the contact details provided by the Registrar was not received. The copy sent by courier could not be delivered, with the courier noting that, “[The Respondent] has moved” and that the courier service attempted to locate a new address for Respondent, but eventually the copy sent by courier was returned to the Center.
While no actual delivery has been confirmed, the requirements of paragraph 2(a) of the Rules have been satisfied. The Rule requires the Center as provider “to employ reasonably available means calculated to achieve actual notice”, not actual notice itself. The Center took all action reasonable in these circumstances. Any failure to achieve actual notice resulted from Respondent's failure to update the contact information in its registration, so Respondent has no one but himself to blame for failure to achieve actual notice. The Panel has jurisdiction over this administrative proceeding. B. Identical or Confusingly Similar
It is well settled that the addition of a common word, particularly a word related to the product or service offered by a mark owner, does not obviate confusion between a trademark and a domain name that includes that mark as its principal or dominant feature. Such is the case here. The dominant feature of the disputed domain name is the initial string GTA, identical to Complainant's federally-registered trademark, and adding “downloads” in fact increases the likelihood of confusion. Paragraph 4(a)(i) of the Policy has been satisfied. C. Rights or Legitimate Interests
Complainant has not authorized Respondent to use its GTA mark and there is nothing in the record to indicate that Respondent has been commonly known by any name containing the three-letter combination GTA. The use to which Respondent has put the disputed domain name is not legitimate under the Policy, as that use clearly trades off the goodwill attached to Complainant's trademark. Complainant has met its burden of proof under this Policy head. D. Registered and Used in Bad Faith
Registration in bad faith under the Policy ordinarily requires Complainant to establish by a preponderance of the evidence that Respondent knew of Complainant's mark and selected the disputed domain name to take advantage of it. The content Respondent placed on its website, as documented in the Complaint, indicates beyond doubt that Respondent had such knowledge and selected the disputed domain name for a free ride on the mark. Those facts are self-evident from the inclusion of links referring specifically to Complainant's GTA products. As to use in bad faith, Respondent's use of the disputed domain name fits squarely within the example of bad faith given in paragraph 4(b)(iv) of the Policy: “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”. Complainant has met its burden of proof under this Policy head. 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 be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: June 3, 2010
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