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.
Respondent is Domain Asset Holdings, of Potomac, Maryland, United States of America, represented by Erika L. Hengst, United States of America. 2. The Domain Names and Registrars
The disputed domain names and are registered with eNom, and the disputed domain names and are registered with TierraNet d/b/a DomainDiscover (collectively, the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On the same day, the Complaint filed the First Amended Complaint with the Center. On August 14, 2013, the Center transmitted a request for registrar verification in connection with the disputed domain names by email to the Registrars. Also on August 14, 2013, the Registrars transmitted their verification response by email to the Center confirming Respondent as the registrant and provided Respondent’s contact details. On August 27, 2013, the Center notified Complainant of an administrative deficiency, and on August 29, 2013, Complainant filed a Second Amended Complaint.
The Center verified that the Complaint, together with the First and Second 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 29, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 18, 2013. The Response was filed with the Center on September 18, 2013.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on September 24, 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 paragraph 7 of the Rules. 4. Factual Background
Complainant Take-Two Interactive Software, Inc. (Take-Two) is one of the world’s most famous and successful video game developers and publishers and has produced and continues to produce some of the most popular and best-selling video games of all time. One of the video game series produced by Take-Two, through its wholly-owned subsidiary, Rockstar Games, Inc., is GRAND THEFT AUTO or GTA. To date, over 125 million units of games in the GTA series have been sold.
Take-Two owns United States trademark registrations for the marks GRAND THEFT AUTO (Registration No. 2,148,765) and GTA (Registration No. 3,439,237). Take-Two also filed two intent-to-use trademark applications (Serial Nos. 77669443 and 85538318) with the United States Patent and Trademark Office seeking registration of the mark GTA TV, for a variety of goods and services. Both of these applications have cleared the opposition period. In addition, Rockstar Games owns numerous domain names related to the GTA series, including , , and . 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain names are confusingly similar to marks in which it has rights. Complainant maintains that each of the disputed domain names incorporates the entirety of one of Complainant’s marks, that the only differences between the marks and domain names are slight and do not change the overall commercial impression of the mark, “and thus are insufficient to escape a finding that the domain name is confusingly similar.” Complainant further notes that it began using the GRAND THEFT AUTO and GTA marks on video games in 1998, more than a decade prior to the registration of any of the disputed domain names.
Complainant argues that Respondent has no rights or legitimate interests in any of the domain names in dispute. Complainant indicates that it has not authorized Respondent to utilize the GRAND THEFT AUTO, GTA and GTA TV marks and that “none of the safe harbor provisions of paragraph 4(c) of the Policy applies to Respondent.”
With respect to the issue of “bad faith” registration and use, Complainant contends, on information and belief, that Respondent is a “domain name speculator.” Complainant points out that there is a notice on the top and bottom of the sites in issue advertising that the domain names are for sale at what Complainant refers to as “exorbitant” prices. Complainant also asserts that Respondent has been involved in several prior domain name disputes, all of which resulted in transfer orders. See, e.g., Universal Assistance S.A. v. Domain Asset Holdings, LLC,WIPO Case No. D2012-2547; Training Channel S.A. v. Domain Asset Holdings,WIPO Case No. D2011-0875; Facebook, Inc. v. Domain Asset Holdings,WIPO Case No. D2011-0516. Complainant also notes that, on May 20, 2013, it sent an email to Respondent to discuss the transfer of the disputed domain names and that Respondent failed to respond. B. Respondent
Respondent indicates that it is in the business of owning, developing and selling domains and contends that it has a legitimate interest in the disputed domain names and did not register the disputed domain names in bad faith.
Respondent asserts that although the domain name is similar to the mark GRAND THEFT AUTO, “it also contains the phrase for a motor vehicle theft, which is commonly known as ’Grand Theft Auto’.” Respondent claims that the term “grand theft auto” is a generic term for an automobile theft. With respect to the other disputed domain names, while Respondent concedes that such names are similar to Complainant’s GTA mark, it contends that such names are also similar to 23 other active marks that contain the abbreviation “GTA.” Respondent further argues that since Complainant does not own a registration for the mark GTA TV and since such mark is not used in commerce, “Respondent’s Domain registration [for ] pre-dates the trademark.”
Respondent urges that offering a domain name for sale “is perfectly acceptable” under the Policy. Respondent contends that many UDRP panels have found that registering a generic domain name with the intent of selling it in commerce is a legitimate use. Respondent also indicates that part of its business model is to own related categories of domain names. It notes, for example, that it owns a number of domain names that incorporate the term “extreme,” 501 other domain names that contain the word “auto,” and 280 domain names that are four letters or less.
Respondent’s contention that it has rights or legitimate interests in the disputed domain names is also based on the fact that the domain names feature its uniquely designed website, which advertise Respondent’s various sister companies and charities, other domain names that may be for sale, a book written by Respondent’s founder, and information regarding the company. Such use, Respondent asserts, amounts to a bona fide offering of goods and services under the Policy.
On the issue of “bad faith” registration and use, Respondent argues that “it cannot be said that Respondent purchased these domains solely for the purpose of selling it to this Complainant” (emphasis original). “It would be unreasonable to conclude that it is proven that Respondent purchased these Domains solely for the purpose of selling them to the Complainant when, specifically in the case of the ‘GTA’ related Domains, there are twenty-three other active trademarks for the same abbreviation” (emphasis original).
Respondent further contends that it has not engaged in a pattern of conduct related to registering domain names so that a trademark owner may not use the domain name, that it is not a competitor of Complainant, and “there is clearly no confusion that the Domains have any relation to Complainant.”
Thus, Respondent claims that none of the circumstances spelled out in paragraph 4(b) of the Policy is applicable. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel concludes that each of the disputed domain names is confusingly similar to either Complainant’s GRAND THEFT AUTO or GTA marks. Each of the domain names incorporates either the mark GRAND THEFT AUTO or the mark GTA in their entirety, adding only generic or descriptive matter, in addition to the generic top-level domain “.com”. The Panel agrees with Complainant that such differences are insufficient to escape a finding of confusingly similarity under the Policy. See eBay Inc. v. ebayMoving/Izik Apo,WIPO Case No. D2006-1307; Microsoft Corp. v. S.L. Mediaweb; WIPO Case No. D2003-0538.
The evidence further establishes that Complainant, through its ownership of registrations covering, and use of, the marks GRAND THEFT AUTO and GTA, has rights in such marks.1 B. Rights or Legitimate Interests
The Panel finds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in any of the disputed domain names.
While the use of a domain name to host parking pages may be permissible if the domain name relates to a generic term and the site relates to such generic meaning, contrary to Respondent’s assertion, the term “grand theft auto,” as used by Complainant, is not generic; it does not identify a type of product or service. Moreover, the “www.” site has nothing to do grand theft auto videos.
Moreover, while the sites at the disputed domain names contain information regarding the purchase of a book and links to Respondent’s other services and companies, the dominant feature of each of the sites is the offer “Domain for Sale.” Under such circumstances, among others, it cannot be held that such use of the domain names is in connection with a bona fide offering of goods or services. And, there is no evidence that any of the other circumstances set forth in paragraph 4(c) of the Policy is applicable. C. Registered and Used in Bad Faith
While it appears that none of the specific circumstances set forth in paragraph 4(b) of the Policy may be applicable, as noted by Complainant, the examples of bad faith registration and use set forth therein are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trade mark of another.” See M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, there is a notice on the top and bottom of each of the sites at the disputed domain names advertising that the domain name is for sale. The offering price ranges from USD 350 for to USD15,000 for . Taken as a whole, the evidence supports a determination that Respondent did not register the disputed domain names other than to offer them for sale. See Training Channel, SA v. Domain Asset Holdings, supra.
Furthermore, any doubt in the mind of the Panel as to the motives of Respondent in registering the disputed domain names is dispelled by the fact that Complainant put forward evidence of Respondent’s pattern of registering domain names that involve trademarks, companies, or businesses of other well-known third parties. The Panel further notes that previous UDRP panels have found against Respondent in circumstances similar to those involved in the instant matter. The fact that Respondent chose not to submit a response in some of these earlier cases, a point raised by Respondent, is immaterial. Respondent, presumably, could have submitted a response and its failure to do so cannot now be used as an argument as to why such decisions should not be considered with respect to the issue of “bad faith” registration and use.
Finally, the Panel finds additional support for its bad faith determination in the fact that Respondent failed to respond to Complainant’s email of May 20, 2013, in which Complainant requested Respondent to contact Complainant to discuss the transfer of the disputed domain names. 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 names , , , and be transferred to Complainant.
Jeffrey M. Samuels
Sole Panelist
Date: October 8, 2013
1 Under the Policy, rights in marks generally are established either through proof of issuance of a registration or proof of long and substantial use, giving rise to common law rights. The Panel notes that the mark GTA TV is not registered and there is no assertion that it has been in use. However, for the reasons set forth above, the Panel concludes that the domain name is confusingly similar to Complainant’s GTA mark
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