The Complainant is Take-Two Interactive Software, Inc. of Los Angeles, California, United States of America (“US”), represented by Mitchell, Silberberg & Knupp, LLP, US.
The Respondent is iCity Corp. - Domain Manager of Mississauga, Ontario, Canada, represented by Smart & Biggar / Fetherstonhaugh, Canada. 2. The Domain Name And Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On August 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2013, 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.
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 August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2013.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 18, 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 the Rules, paragraph 7.
On October 10, 2013 the Panel issued Panel Procedural Order No. 1 in which it requested the Complainant to clarify its arguments, provide more evidence regarding the alleged infringement of the Respondent and support its allegations regarding the Respondent’s attempts to foreclose the Complainant from promoting its products on the Internet and provided the Respondent with an opportunity to respond and submit any comments it may wish to make in relation to the Complainant’s submissions..
On October 17, 2013, Complainant submitted its response to the Panel Procedural Order No. 1.
On October 18 and 22, 2013 the Respondent sent two communications to the Center, stating that it did not receive the Complaint from the Center.
On October 25, 2013 the Respondent sent another communication with attachments to the Center.
On October 25, 2013, the Panel issued Panel Procedural Order No. 2 in which the Panel stated that notwithstanding the fact that the Respondent had not filed a Response on time, the communication sent by the Respondent on October 25, 2013 and its attachments were to be deemed as a supplemental filing. Taking the above into account, and based on paragraph 10 of the Rules, in order to give an equal opportunity to the parties to present their case, the Panel invited the Complainant to submit its comments in relation to Respondent’s supplemental filing. The Panel also invited the Respondent to file a final submission addressing the Complainant’s comments.
On November 4, 2013, the Complainant filed a submission in response to Panel Procedural Order No. 2.
On November 5, 2013, the Respondent filed its final submission according to Panel Procedural Order No. 2.
In accordance with paragraph 10 of the Rules, the Panel decides to accept all supplemental filings submitted by the Complainant and the Respondent. 4. Factual Background
The Complainant is a corporation dedicated to the development, marketing and publishing of interactive entertainment for consumers. Among other products, the Complainant develops and publishes video games designed for multiple platforms.
Among others, the Complainant is the owner of the following trademark registrations: REGISTRATION No. TRADEMARK COUNTRY GOODS/SERVICES FILING DATE REGISTRATION DATE
2148765
GRAND THEFT AUTO
US
computer software and programs all being computer games; video game software; laser disks cartridges, audio and video tapes, audio and video cassettes and CD-ROMs all bearing video games; video game computer software adapted for use with television receivers and computers; motion picture films featuring cartoons and instruction manuals sold as a unit therewith; printed matter, namely, leaflets and newsletters featuring cartoon characters,[ comic books,] posters, photographs, [calendars,] post cards,[ greeting cards, coloring books, decalcomanias, ]stickers, iron-on transfers, gift wrapping paper,[ paper party decorations, pens, pencils, pencil cases, crayons, rulers,] and general purpose plastic bags.
16/09/1996
07/04/1998
3439237
GTA
US
Entertainment software, namely, game discs and downloadable game software for use with personal computers, video game consoles, hand held gaming devices; providing downloadable computer games and motion pictures featuring action and adventure by means of a global computer network; entertainment services, namely, production of entertainment software and motion pictures
29/03/2007
03/06/2008
TMA534366
GRAND THEFT AUTO
CANADA
Computer game software and computer game programs; video game software; discs, cartridges,
all being video games; motion picture films; pre-recorded audio and video cassettes; pre-recorded audio compact discs, pre-recorded digital video discs and CD-Rom games, and musical, audio and video recordings; interactive CD-Roms, for use with television receivers and computers. Printed matter, namely; books, comic books, magazines, posters, booklets, leaflets and newsletters; cards,
namely: post cards; stickers; transfers; namely: decals, and plastic transfers; pens; plastic bags
09/09/1996
11/10/2000
TMA787879
GTA
CANADA
Computer game programs and software, namely, programs and software on recorded media for,
and delivered digitally to, personal computers, video game consoles, handheld computing devices, mobile computing devices, and other computing devices. Printed matter, namely, booklets, pamphlets, and manuals in the field of video games. Entertainment software, namely, game discs and downloadable game software for use with personal computers, video game consoles, hand held gaming devices; downloadable computer games and motion pictures featuring action and adventure by means of a global computer network.
25/09/2008
19/01/2011
The Complainant has also filed the following trademark application: APPLICATION No. TRADEMARK COUNTRY GOODS/SERVICES FILING DATE ADVERTISED
1569624
GTA TV
CANADA
Computer game programs and software; animated motion picture films stored in or on digital video discs, compact discs, hard drives, flash drives, floppy discs, optical discs, laser discs, sold state drives, and digital software featuring entertainment, namely, action, adventure, dramatic, comedic, children's and documentary themes; other pre-recorded digital and electronic media, namely, digital video discs, compact discs, hard drives, flash drives, floppy discs, optical discs, laser discs, and solid state drives
20/03/2012
07/08/2013
In addition, the Complainant has filed the following “intent to use” trademark applications: SERIAL No. TRADEMARK COUNTRY GOODS/SERVICES FILING DATE
77669443
GTA TV
US
Providing an on-line forum for transmission of messages among computer users concerning computer games, video games, non-downloadable software, and multimedia content. Entertainment services, namely, providing online games, providing a website featuring computer games and video games, and news, information, tips, hints, contests, computer interface themes, enhancements, audio-visual content, music, films, videos, television programs, animated series, and other multimedia materials in the field of computer games and video games; providing information, news and commentary in the field of computer games and video games; providing digital video, audio and multimedia entertainment publishing services via the Internet and other communication and wireless networks; entertainment services in the form of providing a series of animated television programs featuring comedy
12/02/2009
85538318
GTA TV
US
Computer game programs and software; animated motion picture films featuring entertainment, namely, action, adventure, dramatic, comedic, children's and documentary themes; pre-recorded video discs and other pre-recorded digital and electronic media in the field of live action programs, motion pictures, or animation featuring entertainment, namely, action, adventure, dramatic, comedic, children's and documentary themes
09/02/2012
The Complainant’s subsidiary, Rockstar Games, owns some domain names, particularly the following: DOMAIN NAME REGISTRATION DATE
29/06/2001
01/05/1998
30/04/2004
04/02/2002
The Respondent owns some domain names since 2009, particularly the following: DOMAIN NAME
The disputed domain name was registered on March 19, 2010. 5. PARTIES’ CONTENTIONS A. Complainant
The Complainant argues the following:
That, since 1998, the Complainant has been using the trademarks GRAND THEFT AUTO and GTA extensively around the world on television, Internet, magazines and various media.
That to date, over 125 million units of the games released in the GTA series have been sold and therefore the trademarks GRAND THEFT AUTO and GTA are strong trademarks worthy of the broadest scope of protection.
That the referred trademarks are widely recognized throughout the US and the world, by millions of fans and consumers alike as being associated with the Complainant.
That the Complainant’s trademarks have been featured in media coverage relating to its video games for over a decade.
That the Complainant has filed intent to use applications with the USPTO for the trademark GTA TV.
That the Respondent is a domain name speculator, because in addition to owning the disputed domain name, the Respondent has registered other domains that likely infringe the rights of third parties, such as , , and .
That the Respondent registered the disputed domain name without the Complainant’s permission, or authorization. i. Confusing similarity
That the Complainant’s well known trademark GTA is incorporated in its entirety in the disputed domain name and that said disputed domain name is identical to the intent to use applications filed by the Complainant for the trademark GTA TV.
That the Complainant has been using the trademark GTA twelve years prior to the registration date of the disputed domain name, and that the Complainant’s first intent to use application for the trademark GTA TV was filed a year before the Respondent registered the disputed domain name.
That the Complainant’s trademarks have achieved a high degree of distinctiveness and are therefore associated with the Complainant. ii. Rights or legitimate interests
That the Respondent has not been authorized by the Complainant to use the trademark GTA, and that therefore the Respondent cannot be said to have legitimately chosen the disputed domain name unless the Respondent was seeking to create an impression of an association with the Complainant.
That, since there is no authorization from the Complainant to use the Complainant's trademarks, the Respondent’s interests in the disputed domain name cannot be legitimate.
That, since the disputed domain name does not presently resolve to any active website, there is no use in connection with a bona fide offering of goods or services, and the Respondent appears to be engaging in domain name speculation.
That the Respondent has not acquired any trademark usage in the Complainant´s trademarks and is not commonly known to be affiliated with the Complainant.
That the Respondent cannot establish that it is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers.
That once the Complainant makes a prima facie case showing that the Respondent has no rights or legitimate interest in the disputed domain name, the burden of proof has been shifted and therefore the Respondent needs to rebut said presumption.
That the Respondent has admitted to own 800 domain names, which are parked similarly to the disputed domain name, and are not in use for legitimate businesses. That some of these domain names reproduce trademarks owned by third parties, or are related to typosquatting models.
That it is the Respondent’s burden to establish its rights or legitimate interests in the domain name, and that the said Respondent has not proven to have any such interests or rights.
That the Respondent’s purported use of the domain name fails to meet any of the factors contemplated in paragraph 4(c) of the Policy.
That the Respondent has held the disputed domain name for over three and a half years and has not shown that it has used or made any demonstrable preparations to use said domain name in connection with a bona fide offering of goods or services.
That the Respondent has made no attempt to own the domain name , despite admittedly holding over 800 domain names.
That the Respondent is not making and has never made any legitimate, noncommercial or fair use of the disputed domain name. That it has rather merely squatted on the domain name, keeping it from legitimate use by the Complainant.
That in situations where a Complainant establishes its legitimate trademark interest in the domain name at issue, it is not relevant whether there could be other permissible uses of the term at issue by third parties (such as GTA for Greater Toronto Area).
That it is undeniable that the Complainant has established a long-standing and world famous trademark, and that it makes no difference that the term GTA is also an acronym for the Greater Toronto Area, Gas Transportation Agreement or Georgia Tennis Association, because the Respondent has no business using the Complainant's mark and has made no preparations to use the disputed domain name, therefore it has not established a legitimate interest in said domain name.
That the Complainant’s GTA trademark is famous in Canada, and that there are numerous decisions that have upheld the rights of owners of trademarks in short acronyms.
That Respondent has failed to meet its burden of producing evidence sufficient to show a legitimate interest or right in the disputed domain name. iii. Bad faith
That the 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 trademark of another.
That the Respondent has acted in bad faith because it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent´s website.
That the Respondent is clearly attempting to confuse Internet users for its own commercial gain.
That the Respondent’s bad faith is also evidenced by its attempts to foreclose the Complainant from promoting its products on the Internet.
That the Respondent is curtailing the Complainant’s right to exploit the value of its trademark on the Internet and is blocking Complainant’s efforts to capitalize on its exclusive rights to actively promote its products under the GTA name.
That the Respondent appears to be a domain name speculator that has engaged in a pattern of registration of infringing domain names such as , and , which consist on prima facie evidence of a pattern of bad faith registration.
The Complainant states that the Respondent is trying to obtain a benefit from common misspellings that could be made by Internet users who are looking for a particular site of a particular provider of goods or services (typosquatting).
That the Respondent’s typosquatting behavior is evidenced by the fact that said Repondent owns which merely replaces the “b” in with a similar-looking number “6” that could mislead a user in clicking through to the website.
That Respondent’s is a misspelling of Yahoo!’s GEOCITIES trademark, that is merely one errant “a” away from the world-famous mark ESPN, and that reproduces the trademark CSPAN.
That other domain names owned by the Respondent are not typos but are intended to trade off of alternate language used by internet users and capture page views intended for pages linked to other marks such as which only adds the descriptive term “travel” to trademark AIR CANADA.
That Respondent’s is identical to trademark AMERICAN CAPITAL which is appropriated by American Capital, Ltd.
That the Respondent has admitted that its domain name is a reference to the hugely popular and that the undisputed evidence is that the Respondent’s pattern of registering domain names that trade off of the marks of others is, by itself, evidence of Respondent’s bad faith.
That the Respondent’s conduct in this instance has prevented the Complainant from using its GTA TV mark in a website by using the disputed domain name . That given the popularity and significant secondary meaning attached to the Complainant´s trademark, it can be inferred that the intention of the Respondent is to block the Complainant from reflecting its trademark in a corresponding domain name.
That the Respondent’s registration of the disputed domain name is primarily for the purpose of disrupting the business of a competitor.
That the Respondent did not respond to the Complainant’s communication sent prior to filing the Complaint, to seek the return of the disputed domain name.
That the Respondent’s passive holding of the disputed domain name constitutes bad faith, because it is not possible to conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
That the Panel can still find bad faith even where none of the four factors established in paragraph 4(c) of the Policy have been met, because: a) the Respondent does not use the website in association with a legitimate commercial or non-commercial business activity; and b) the Respondent has taken deliberate steps to hide its true identity.
That the circumstances established in paragraph 4(b) of the Policy set forth four non-exclusive scenarios, any of which is sufficient to find bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
That the Respondent’s purported intention to create some unspecified Toronto-themed website is irrelevant, due to the fact that the Respondent has kept inactive the disputed domain name for three and a half years, during which it has sat on , keeping the Complainant from exploiting its GTA and GTA TV marks.
That the Respondent’s inaction for over three and a half years regarding the disputed domain name, and its admission that it is holding hundreds of other undeveloped domain names proves its bad faith.
That the Respondent has held the infringing domain name without using it, taking no steps to engage in any sort of good faith use of the domain name; that there is no evidence that the Respondent has done anything to become associated with , GTA, or even the Greater Toronto Area.
That the Respondent claims to be a web developer and admittedly is a domain name speculator, and that considering that Complainant’s GTA series has sold over 150 million units and has been extensively advertised throughout the world including Toronto (Canada), it is evident that at the time of registration of the disputed domain name the Respondent knew or should have known of the existence of Complainant’s trademark.
That since the Respondent admits that it is in the business of domain speculation, it has the obligation to act diligently to ensure that it does not register infringing trademarks.
That the Respondent has engaged in a pattern and practice of registering domain names that trade off the marks of others. B. Respondent
The Respondent argues the following:
That the Respondent’s business is in the field of website development and design, and that it develops websites associated with its own domain names.
That GTA refers to the term “Greater Toronto Area”, which is a generic name.
That the Respondent has developed many websites containing generic names. i. Confusing similarity
This ground was not disputed by the Respondent. ii. Rights or legitimate interests
That there is no basis for the Complainant’s allegations that the Respondent has no rights or legitimate interests, and that the “Respondent may intend to offer the domain at exorbitant prices”, because the Respondent is in the business of developing web sites related to the domain names it acquires, not the business of selling domain names.
That the Respondent’s legitimate interest derives from its intention to develop a non-infringing website related to the Greater Toronto Area, or GTA.
That Mississauga Ontario, which is the place where the Respondent is located, is a part of the Greater Toronto Area.
That the Respondent’s intention is to develop a website associated with the disputed domain name such as television and video pertaining to the Greater Toronto Area.
That registrants of domain names may have a legitimate interest in generic words or geographical indicators, provided that they are not used to trade on trademark owner’s goodwill.
That short two or three letter acronyms have been held to ground a legitimate interest provided they are not used to trade on trademark owner’s goodwill.
That the Complainant has failed to provide a reasonable basis to undermine the Respondent’s legitimate interest in the disputed domain name .
That the Complainant did not present a single UDRP precedent where a domain name that corresponds to a descriptive term or dictionary word, and registered because of that, was ordered to be transferred.
That the Complainant has never argued paragraph 4(c)(ii) or (iii) of the Rules, but rather its arguments are based entirely on paragraph 4(c)(i) of the Rules.
That the Respondent has registered and used the domain names and much before the Complaint was filed.
That the fact that the Respondent registered and used and in a non-infringing manner for years prior to this Complaint, shows that it has a legitimate interest in the similar domain name .
That there is no requirement under the law to use domain names within a timeframe after being registered.
That the Complainant alleges that Respondent’s allegation of lack of actual knowledge of the Complainant's mark GTA is not credible due to strong sales of the Grand Theft Auto video game, but that the Complainant provides no real evidence as to whether the average resident of the Greater Toronto Area will or will not be familiar with the trademarks Grand Theft Auto, or GTA. iii. Bad faith
That the Complainant has not met the test to establish bad faith registration requirement.
That there is no evidence showing that the disputed domain name was registered for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant.
That the Complainant’s reliance on the email dated May 20, 2013, in which the Respondent was asked to transfer the disputed domain name, is not relevant due to the fact that said email was not responded because the Respondent had no interest in transferring the disputed domain name. In said email the Complainant did not allege that the disputed domain name was infringing the Complainant’s rights, in which case the Respondent would have clarified the situation.
That the disputed domain name was not registered in order to prevent the Complainant from reflecting its mark in a corresponding disputed domain name. The Respondent had no knowledge of Complainant’s trademark rights.
That there is evidence that demonstrates that other companies have registered domain names incorporating the term “GTA” without incident.
That the Complainant has not established the alleged pattern of bad faith conduct by the Respondent, because is based on the generic name “save on” and is intended to be a coupon or discount website, which allows users to “save on ” various products and services.
That is an active website for a Pakistani company who is a client of the Respondent, and that is a generic website providing useful information on facial treatments.
That the Complainant is a software Company and Respondent is a company dedicated to website development and design, and thus both companies are not competitors.
That the Respondent owns many undeveloped domain names. That the inactivity of the disputed domain name by itself shows that the Respondent does not intend to trade off on the goodwill that the Complainant may have.
That the WhoIs information for provides Respondent’s full and accurate registered corporate office, address and telephone number, and that therefore there is no evidence that supports the Complainant’s allegations regarding Respondent’s intents to hide its identity.
That the present case does not meet the test established under Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 because it does not contemplate a failure to respond or an attempt to hide Respondent’s identity.
That there is a clear plausible and indeed certain contemplated use for a non-infringing web site related to the Greater Toronto Area.
That in the cases cited by Complainant the disputed domain name had no alternative logical purpose.
That there are more than a dozen of Canadian trademark applications and registrations incorporating the descriptive term GTA as a reference to the Greater Toronto Area, and that the applicants and owners of said trademarks reside in the Greater Toronto Area. That there are other GTA trademark registrations granted in the US.
That Complainant tries to pitch its trademark GTA as somehow equivalent to a stand alone strong acronym brands like NASDAQ, BMW or IBM, where in fact this trademark is one among dozens of trademarks with the term GTA.
That in the present case the evidence shows that was registered for the common descriptive meaning of Greater Toronto Area and not with reference to the Complainant’s trademark or any other dozens of GTA trademarks around the world. That this is supported by the Respondent's business model and by the fact that the Respondent has never used the disputed domain name to infringe the Complainant's marks.
That bad faith is not met due to the fact that the Respondent had previously registered and owned and .
That besides the Complainant’s speculation of potential examples of typosquatting, the Respondent is not engaged in a pattern that consists in “registering the domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name”.
That the explanations provided by the Respondent in relation with the fact that was registered due to the descriptiveness of said term is sufficient to refute Complainant’s allegations regarding that registration of the disputed domain name was made to disrupt the Complainant’s business.
That the Respondent’s registrations of and predate the intent to use based trademark applications filed by the Complainant for the mark GTA TV. That the Complainant is not seeking to recover the disputed domain name that it believes was registered in bad faith, but is instead trying to use its trademark to misappropriate the disputed domain name.
That consists of two dictionary words "go" and "cities", and is intended for a potential travel website; that is similar in appearance to , but it is not currently owned by the Respondent; that consists of three dictionary words forming a common phrase; and that the domain name resolves to an active non-infringing website; that corresponds to a company called Espan Media, Inc., registered in 2004 by the Respondent, and later revoked; that was acquired with a bundle of domain names similar to , that its registration was not intended to infringe on the trademark of the US cable network, and that the parking page to which it resolves is not controlled by the Respondent; that resolves to an active website called Link Directory; and that comprises two dictionary words and a common phrase, and that the Respondent had never heard of a company called American Capital. 6. Discussion And Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
As the Respondent has failed to submit a timely Response to the Complainant’s contentions within the Response due date, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The disputed domain name entirely incorporates the Complainant’s trademark GTA. Therefore, the disputed domain name is identical to the Complainant’s trademark GTA, but for the presence of the ccTLD “.tv”, which may not have legal significance and may be irrelevant for the purposes of this analysis, as it does not add any distinctiveness to the disputed domain name (see, mutatis mutandis, Antena 3 de Televisión S.A. c/ D. Javier García Quintas,WIPO Case No. D2002-0537; CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859).
The disputed domain name is also identical to the Complainant’s trademark applications for GTA TV filed on February 12, 2009, and February 09, 2012 with the USPTO and the Canadian trademark registration for GTA TV, which was filed on March 20, 2012, and advertised on August 7, 2013.
Taking the above into account and since the Respondent did not dispute the confusing similarity among the Complainant's trademarks and the disputed domain name, the Panel finds that the Complainant has met the first requirement of the Policy. B. Rights or Legitimate Interests
Policy, paragraph 4(c) sets forth, in particular but without limitation, the following examples as circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(ii) you are 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 disputed domain name is inactive. It does not presently resolve to any active website. Therefore, there cannot be any use of the disputed domain name, or any bona fide offering of goods or services on the side of the Respondent.
There is no indication in the evidence to conclude that the Respondent has been commonly known by the disputed domain name.
The Respondent owns two similar domain names: and . They were both registered in 2004. Both domain names are active, and provide information regarding the Greater Toronto Area. The Respondent has its domicile in said area. The Panel considers that these domain names are related to , even if the latter is inactive.
The rationale of the Policy is to remedy clear cases of abusive domain name registrations. In order to maintain a balance in the system, UDRP panels are required to analyze whether the domain name owner has any rights or legitimate interests to said domain name, given the specific and very narrow nature of the Policy, and the problem it deals with. In the presence of rights or legitimate interests on the side of the Respondent, the controversy exceeds the scope of, and remedies available under the Policy.
In this case, the Respondent has demonstrated to the satisfaction of the Panel that the term GTA is used as a term related to a geographical location referring to the Greater Toronto Area, and that the inhabitants of said area use this term commonly.
The content of and seems to be legitimate and reflect a use consistent with the Respondent’s Toronto-related theme. The Respondent does have its domicile in the Greater Toronto Area.
In the absence of sufficient evidence of bad faith registration or use of the disputed domain name on the part of the Respondent (discussed below), and the reasonable explanation for the selection of the disputed domain name as part of a common registration theme in connection with the Respondent’s domicile, the Panel finds, on balance, that the Complainant has not demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name.
Thus, the Panel finds that the second requirement of the Policy has not been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
The Complainant asserts that the Respondent registered other domains that likely infringe the rights of third parties, such as , , and . No evidence of said alleged infringement, or the rights of third parties that were allegedly infringed was submitted. The Panel reviewed the WhoIs data regarding these domain names, and validated that the Respondent is in fact the owner of these domain names, but upon reviewing these domain names, the Panel found that resolves to a page with contents regarding “Facial skin care”, “Beauty tips”, “Facial treatments”, and the like; resolves to a website of a company called Citilink Travels (Pvt.) Ltd, apparently located in Pakistan, by means of which travel services are offered (air ticketing, hotel reservations, travel insurance and the like). According to the Respondent, the owner of City Link Travels is a client of said Respondent, and the domain name has been assigned to said owner during the course of this proceeding. seems to be a generic and commonly used term, and resolves to a site with a search engine that looks for airline tickets and related items. is inactive.
Some other cases like , , , , and could appear to be more complex, and under appropriate circumstances an action under the UDRP could possibly be brought.
Paragraph 4(b)(ii) of the Policy requires the Respondent to have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct.
In this case, the record does not show to the Panel that the Respondent had an intent to block the Complainant from reflecting its marks in a corresponding domain name, particularly because the Respondent owns the domain names and since 2004, and uses them in connection with information services concerning the Greater Toronto Area. It does not seem like the Respondent is preventing the owner from reflecting the Complainant's trademarks in a domain name that according to the Respondent is related to a group of domain names that are intended to provide information related to the Greater Toronto Area. The Panel finds the evidence filed by the Complainant regarding the other domain names owned by the Respondent does not establish a pattern of conduct of preventing the owner of a trademark from reflecting said trademark in a domain name.
Concerning the passive holding claimed under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”), the Complainant has only proven that its trademarks are widely recognized, and that the disputed domain name is inactive. The spirit of Telstra is to find bad faith in the presence of elusive conduct on the side of the Respondent, which is not present here. The Respondent did list its address and contact details in the registration agreement, and said data is publicly available on the WhoIs database. Telstra requires that under the case circumstances, "it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as passing off, infringing consumer protection legislation, or infringing the Complainant’s rights under trademark law". In other words, that the evasive and dubious conduct of the Respondent leads the Panel to believe that the domain name is necessarily tied to a bad faith scheme. The Panel finds this is not the case here. The Respondent has argued that the disputed domain name is the acronym of a geographical location, that it has rights and legitimate interests to the domain name, and that it has been using the acronym GTA in other cases, associated to good faith content.
This Panel believes that no Telstra finding can be made under the circumstances presented in this case.
The evidence submitted by the parties does not show to the satisfaction of the Panel that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.
The Policy is designed to deal with cybersquatting cases, or cases of abusive conduct regarding domain names and trademarks. If the elements of the Policy are not concurrently met, no ruling can be issued favoring the Complainant. While the Policy has a specific purpose and remedies, any finding under said Policy does not prevent the Complainant to bring trademark infringement actions in national courts.
The Panel finds that the Complainant has failed to prove the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Kiyoshi Tsuru
Sole Panelist
Date: November 14, 2013
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