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 johnny, leed johnny, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 May 14, 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 in English on May 14, 2020. On May 14, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 14, 2020, the Complainant confirmed its request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2020. The Complainant is the parent company of video game publishing label, RockStar Games which has conducted business under the ROCKSTAR house mark and the ROCKSTAR GAMES mark since 1998 and 1999 respectively. The Complainant offers interactive entertainment software, video games and accessories as well as video and online entertainment services under the ROCKSTAR, ROCKSTAR GAMES and other ROCKSTAR-formative marks, for example ROCKSTAR WAREHOUSE and ROCKSTAR PASS. The Complainant has been offering social networking and data services to its software users at its website, “www.rockstargames.com”, which is currently used to provide information about the Complainant’s goods and services. The Complainant has an active presence on the Internet, with more than 45 million followers on its official Facebook, Instagram and Twitter pages. The Complainant has expended money promoting its goods and services under the ROCKSTAR marks and has generated hundreds of millions in revenue from sales of its goods and services bearing the ROCKSTAR trade mark. The Complainant owns numerous trade mark registrations for ROCKSTAR, ROCKSTAR GAMES and ROCKSTAR-formative marks in various jurisdictions, including the following: Jurisdiction Mark Registration No. Class No. Registration Date United States ROCKSTAR 5639907 25 January 1, 2019 United States ROCKSTAR GAMES 2456387 9 May 29, 2001 United States ROCKSTAR GAMES 4037654 9, 41 October 11, 2011 United States ROCKSTAR GAMES 4303689 28 March 19, 2013 China ROCKSTAR GAMES 6943681 41 February 21, 2011 The Complainant also owns the following domain names which it uses to link to its websites: - The disputed domain name was registered on January 12, 2020 and resolves to a website displaying a collection of click-through links (such as “Socialclub Rockstargames”) which divert Internet users to third party websites, some of which are associated with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant claims that as a result of its long-standing use, extensive promotion, advertising and unsolicited publicity, the ROCKSTAR and ROCKSTAR GAMES marks are well known throughout the world. The Complainant contends that the disputed domain name is nearly identical and confusingly similar to its ROCKSTAR and ROCKSTAR GAMES trade marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, 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. Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases. The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent did not respond on the issue of the language of the proceeding. The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that: (a) the disputed domain name is registered in Latin characters, rather than Chinese script; (b) the disputed domain name comprises English words “sign in”, “rock star” and “games”; and (c) according to the evidence submitted by the Complainant, the website to which the disputed domain name resolves contains contents and links in English. Additionally, the Panel notes that: (a) the Center has notified the Respondent of the proceeding in both Chinese and English; (b) the Respondent has been given the opportunity to present its case in this proceeding; and (c) the Center has informed the Respondent that it would accept a Response in either English or Chinese. Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in ROCKSTAR and ROCKSTAR GAMES by virtue of its use and registration of the same as trade marks. The disputed domain name incorporates the Complainant’s trade marks ROCKSTAR and ROCKSTAR GAMES in their entirety. The addition of the words “sign” and “in” (in terms of the ROCKSTAR GAMES trade mark) or “sign”, “in” and “games” (in terms of the ROCKSTAR trade mark) does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trade marks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not in this case impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade marks. Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974. The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ROCKSTAR and ROCKSTAR GAMES trade marks or to seek registration of any domain name incorporating the trade marks. The Respondent appears to be an individual by the name of “johnny, leed johnny”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “rockstar” or similar. According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring a collection of click-through links which redirects to third party websites, some of which are associated with the Complainant. Presumably, the Respondent receives pay-per-click fees from the linked websites. The consensus view of previous UDRP panels is that use of a domain name to post pay-per-click links may be permissible in some circumstances, but would not of itself automatically confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of his rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted. Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted 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 website or location or of a product or service on the respondent’s website or location. By virtue of its extensive use and advertising since 1998, the Complainant and its trade marks ROCKSTAR and ROCKSTAR GAMES enjoy a significant reputation worldwide and a strong online presence. There is no doubt that the Respondent was aware of the Complainant and its trade marks when he registered the disputed domain name. In any case, considering the nature of the disputed domain name, a presumption can be made that the Respondent was aware of the Complainant and/or its trade marks when he registered the disputed domain name. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the ROCKSTAR and ROCKSTAR GAMES trade marks and their extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. The disputed domain name resolves to a website which appears to be a parking page featuring a collection of click-through links (such as “Socialclub Rockstargames”) which redirects Internet users to third party websites. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. See WIPO Overview 3.0, section 3.5. A presumption can be made that the Respondent stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such use of the disputed domain name clearly seeks to capitalise on the trade mark value of the Complainant’s ROCKSTAR and ROCKSTAR GAMES trade marks resulting in misleading diversion. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and for commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case. The Respondent has not filed a response to deny the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy. 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 Sok Ling MOI
The Center appointed Sok Ling MOI as the sole panelist in this matter on June 22, 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
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Sole Panelist
Date: July 12, 2020
Full & Egal Universal Law Academy