The Complainant is Take-Two Interactive Software, Inc., United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is GMO-Z.COM Runsystem JSC, Viet Nam / Quang Vinh Chau, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 25, 2020. On March 25, 2020, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 25, 2020. The Respondent did not comment on the language of the proceeding. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2020. The Center appointed Teruo Kato as the sole panelist in this matter on April 30, 2020. 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 According to the Complainant, the Complainant is a leading worldwide publisher, developer, and distributor of interactive entertainment software and accessories, including video and computer games and online interactive video games, interactive video and online entertainment services, and a wide array of related goods and services, which are developed, marketed, and sold to consumers throughout the world. The Complainant submitted evidence of various trademark registrations and owns, inter alia, the Japanese trademark ROCKSTAR GAMES No. 5376678, registered on December 17, 2010, as set out in section 6.2 A below. The disputed domain name The Respondent is GMO-Z.COM Runsystem JSC, Viet Nam / Quang Vinh Chau, Viet Nam. The disputed domain name was registered on October 29, 2019. According to the Complaint, the website at the disputed domain name currently resolves to an inactive webpage. Previously, the Complaint indicates that the disputed domain name resolved to a website impersonating the Complainant and providing links to third party websites. The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is nearly identical and confusingly similar to the Complainant’s registered trademarks in the Unites States of America, Japan and worldwide, in which the Complainant has exclusive rights and has used for many years in connection with the promotion and sale of computer and video game programs and related goods and services. The Complainant further contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding A. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese. The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, “Complainant would incur substantial expenses for translation and the administrative proceedings would be unduly delayed”. The Complainant further contends that “Respondent appears to be familiar with the English language as the Disputed Domain Name previously resolved to a website that contains English content” and submit materials to support such contention. The Panel notes that information of these proceedings was provided to the Respondent both in English and Japanese. In particular, the Panel notes that the Respondent was advised in both English and Japanese that, if the Respondent was to object to the Complainant’s request for English, the Respondent was invited to indicate that objection and to submit any arguments or supporting materials as to why the proceedings should not be conducted in English by March 30, 2020. The Respondent did not respond by this deadline nor later. The Panel would have accepted a Response from the Respondent in Japanese, but none was filed. Further, the Panel notes that the disputed domain name includes “rock”, “star”, “games”, and “site”, which are English words. In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark. The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of ROCKSTAR GAMES registered trademarks, including inter alia the Japanese trademark ROCKSTAR GAMES No. 5376678, registered on December 17, 2010, covering goods in classes 9 and 41. As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the ROCKSTAR GAMES trademark in which the Complainant has rights. Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case. Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark ROCKSTAR GAMES. The Panel finds that the recognizable element of the disputed domain name is the Complainant’s trademark ROCKSTAR GAMES. The Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant contends that “Respondent has no rights or legitimate interest in the Disputed Domain Name. The Disputed Domain Name is 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 Complainant’s ROCKSTAR GAMES Marks”. The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy. Furthermore, the fact that the disputed domain name is identical to the Complainant’s trademark carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. As to the registration in bad faith, the Panel notes and accepts that the trademark ROCKSTAR GAMES was registered and is known internationally, before the disputed domain name was registered on October 29, 2019. In the circumstances, the Panel is satisfied that the Respondent is most likely to have known of the Complainant, its products, and trademarks prior to registering the disputed domain name and that it registered the disputed domain name in bad faith. As to the use in bad faith, the Complainant acknowledges that the disputed domain name does not currently resolve to any active webpage, but contends that this does not prevent a finding of registration and use in bad faith and cites certain decided cases, including Commissioners for HM Revenue and Customs v. Domain Privacy, Domain Privacy ApS / Keris Patih / National Insurance,WIPO Case No. D2017-0533. The Complainant submitted a screen shot of the webpage of the disputed domain name allegedly taken by the Complainant on November 1, 2019, and contends that “Respondent has intentionally attempted to attract visitors to Respondent’s websites by creating a likelihood of confusion with Complainant’s ROCKSTAR Marks as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name” and that “Respondent provided links to redirect visitors to order pages on third party websites for consumers to purchase for RED DEAD REDEMPTION 2”, the latter being one of the products of the Complainant. The Complainant submitted to the Panel documentary materials to support its contentions as above, to which the Respondent did not submit any comments. Having considered all the circumstances, including the previous use of the disputed domain name and absence of any conceivable good faith use, the Panel holds that the Respondent is using the disputed domain name in bad faith. See sections 3.1.4 and 3.3 of the WIPO Overview 3.0. In the circumstances, the third requirement of the Policy has been satisfied. 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 name Teruo Kato
Sole Panelist
Date: May 11, 2020
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