The Complainant is Take-Two Interactive Software, Inc. of New York, New York, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Menzel Patrick of Leipheim, Germany, self-represented. 2. The Domain Name and Registrar
The disputed domain names and are registered with Vautron Rechenzentrum AG (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 23, 2018, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated February 23, 2018 stating that German is the language of the registration agreement of the disputed domain name, on February 27, 2018, the Center sent a request in English and German for the Parties to submit their comments on the language of the proceeding. On March 1, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2018. The Respondent did not submit any formal response but submitted email communications on March 9 and 10, 2018. In his email sent on March 9, 2018, the Respondent stated that he wanted to cancel the registration of the disputed domain names. On March 12, 2018, the Center notified the Complainant of the Respondent’s email, and asked the Complainant if it wanted the administrative proceedings to be suspended to implement a settlement agreement between the parties pursuant to paragraph 17 of the Rules. On March 14, 2018, the Complainant replied that it did not want a suspension but rather prefers the continuation of the proceeding.
The Center appointed Alfred Meijboom as the sole panelist in this matter on April 13, 2018. 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 a publisher, developer, and distributor of interactive entertainment software who owns, inter alia, the United States trademark RED DEAD, with registration number 4,186,707, registered on August 7, 2012, and the European Union trademark RED DEAD with registration number 10,650,075, registered on July 12, 2012, both registered for computer game related goods and services in classes 9 and 41 (the “Trademarks”).
The Respondent registered the disputed domain name on September 23, 2017, and the disputed domain name on October 8, 2017. The disputed domain name appeared as a website which hosts a video game titled “Red Dead”, which is unrelated to the Complainant’s video game series under the Trademarks. The disputed domain name appeared as a website which hosts a forum for the Respondent’s “Red Dead” video game. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it has been using the Trademarks for a series of western action-adventure video games and related goods and services since 2003. The last game released in the “Red Dead” series was called “Red Dead Redemption”, which has sold over 15 million copies worldwide and received over 160 “Game of the Year” awards. The Complainant has expended significant time and money in promoting its goods and services in connection with the Trademarks, and has generated hundreds of millions in revenue as a result of its sales of the games and other goods and services bearing the Trademarks. As a result of the intensive use of the Trademarks, and the huge investments made in this respect, the Trademarks are well-known. On September 23, 2017, the day following the Complainant teasing an update about the release of its “Red Dead Redemption 2” video game, the Respondent registered the disputed domain name and on October 8, 2017, ten days after the release of the second trailer for the “Red Dead Redemption 2” video game, the Respondent registered the disputed domain name . Both registrations were made without the Complainant’s authorization or consent.
On November 6, 2017, the Complainant sent the Respondent a cease-and-desist email, also requesting for the Respondent to voluntarily transfer the disputed domain names to the Complainant. The Respondent did not answer the email, but shortly after the email was sent, the disputed domain name resolved to a new website appearing as parked webpages. The Complainant sent the Respondent a reminder of its wish that the disputed domain names be transferred to the Complainant on November 17, 2017. According to the Complainant, the Respondent did not reply to the reminder but instead chose to wait several weeks and then relaunch his “Red Dead” game on the website under the disputed domain name and has commenced use of the disputed domain name as an online forum for his “Red Dead” game.
The Complainant claims that the disputed domain names are nearly identical and confusingly similar to the Trademarks. The only difference between the disputed domain name and the Trademarks is the addition of the generic Top Level Domain (“gTLD”) “.biz”, which is irrelevant in the confusing similarity analysis. The only differences between the disputed domain name and the Trademarks is the addition of the gTLD “.com” and a hyphen between the words “red” and “dead”, which minor differences are irrelevant as they fail to alleviate the similarity between this disputed domain name and the Trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain names because they are not the trade name or company name of Respondent, Respondent is not commonly known by that name, is not a licensee of the Complainant, and is not otherwise authorized to use the Trademarks. The Complainant is of the opinion that the Respondent’s sole intention was to benefit financially from, and/or unlawfully trade upon, the renown associated with the Trademarks, which is already evidenced by the fact that the Trademarks were well-known at the time of registration of the disputed domain names, which also took place shortly after the Complainant made public announcements in connection to its “Red Dead Redemption 2” video game.
According to the Complainant, the Respondent registered the disputed domain names in bad faith because, given the fame, popularity and long-prior use of the Trademarks since 2004, there can be no doubt that the Respondent was aware of the Complainant’s rights in the Trademarks at the time he registered the disputed domain names. Also the timing of the registration of the disputed domain names, shortly after public announcements of the Complainant further supports a finding that the Respondent had the Trademarks in mind when registering the disputed domain names.
Further, the Complainant claims that the Respondent’s use of the disputed domain name was in bad faith as the Respondent has intentionally attempted to attract visitors to the Respondent’s websites under the disputed domain names by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain names. B. Respondent
The Respondent did not submit any formal response but submitted email communications on March 9 and 10, 2018. 6. Discussion and Findings 6.1. Language of the Proceedings
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The purpose of Paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In this respect, the Panel must take into account “all relevant circumstances” (SWX Swiss Exchange v. SWX Financial LTD,WIPO Case No. D2008-0400).
In this case, the language of the Registration Agreement is German. The Complainant has submitted a request that the language of the proceedings shall be English. The Complainant argues that the language of the proceedings should be English because the Respondent appears to be familiar with the English language as the disputed domain names resolve to websites that contain English content, while the disputed domain names contain the phrase “Red Dead” which is comprised of English words and the disputed domain names contain the top level domains “.com” and “.biz”, which are domain extensions in the English language. Further, the Complainant claims that it is not able to communicate in German, and for this reason, the Complainant would incur substantial expenses for translation and the administrative proceedings would be unduly delayed.
The Respondent did not respond to the Complainant’s request to change the language of proceedings, but rather sent the Center an email on March 9, 2018 in German stating that it wishes to cancel the registration of the disputed domain names.
The Panel cannot accept the Complainant’s argument that registration of a domain name in gTLDs “.biz” or “.com” is as such evidence of a respondent’s knowledge of English as gTLDs are not limited to certain groups or languages but rather meant to be used globally. The Panel can also not accept the Complainant’s justification for its request to change the language of proceedings because it is not able to communicate in German as it submitted evidence of cease and desist emails in German which the Complainant’s German counsel sent to the Respondent. Further, the screen prints submitted by the Complainant are barely legible, but do show a few English words as well as German words, which in itself is insufficient to show that the Respondent speaks sufficient English to understand the Complaint and base his Response on it in English. Likewise the fact that the Respondent used the phrase “Red Dead” as part of the disputed domain is not sufficient to show that the Respondent has a sufficient level of English to file a Response in this administrative procedure.
However, the Respondent was aware of the Complainant’s allegation that the disputed domain names were infringing the Trademarks, and that the Complainant required the Respondent to transfer the disputed domain names to the Complainant, as the cease and desist letter and reminder of November 6, 2017 and November 17, 2017, respectively, were written in German. The Respondent also understood that these administrative proceedings were meant to end his registration of the disputed domain names as the Respondent confirmed to the Center that he wants to cancel the registration of the disputed domain names. As the Complainant and the Respondent are aligned in this respect, ordering the Complainant to translate the Complaint into German would unnecessarily delay the proceedings. The Panel therefore decides that the language of the proceedings shall be English. 6.2. Substantive Issues A. Identical or Confusingly Similar
It is well established that gTLDs such as “.biz” and “.com”, may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain name is identical to the Trademarks. Although it is true that the interspacing between “red” and “dead” is deleted, it is without any significance as domain names cannot include any form of interspacing per se.
The Panel finds that the disputed domain name is confusingly similar to the Trademarks. The Respondent has taken the Trademarks in their entirety and merely added a hyphen between “Red” and “Dead”, which does not distinguish this disputed domain name from the Trademarks. The addition of a hyphen can be considered typosquatting because this disputed domain name is likely to create confusion due to its visual similarity with the Trademarks (e.g., Autogrill Retail UK Limited v. Hongjun Technology Ltd. / John Li,WIPO Case No. D2011-1204).
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use the Trademarks or register the disputed domain names, the Respondent has not been commonly known by the disputed domain names, and the disputed domain names resolve to websites which use the Trademarks in connection to similar goods and services for which the Trademarks were registered. As the Respondent used the disputed domain names to misleadingly create an association with the Complainant for his own commercial gain there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain names in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain names he must have had the Trademarks in mind as they are not a commonly used expression in connection to video games as such, had already been registered and used for many years, were well-known at the time of the registration of the disputed domain names, while the Respondent registered the disputed domain names soon after the Complainant’s public announcements for its new publication of its games’ series under the Trademarks which received massive global media attention, whereas the website to which the disputed domain names resolve used the Trademarks in connection to offering a competing product under the same name as the Trademarks. Furthermore, the use of the Trademarks and the lack of clear disclaimers would likely confuse Internet users into believing that a relationship existed between the Complainant and the Respondent. Under the circumstances, the Panel is therefore satisfied that the Respondent registered the disputed domain names in bad faith and that the use which the Respondent made of the disputed domain names to attract Internet users for the Respondent’s commercial gain constitutes use of the disputed domain names in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 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 the Complainant.
Alfred Meijboom
Sole Panelist
Date: April 24, 2018
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