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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rockstar Games v. Texas International Property Associates

Case No. D2007-0501

 

1. The Parties

The Complainant is Rockstar Games, New York, New York, United States of America, represented by Gena A. Feist, Esq., United States of America.

The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <grandtheftauto6.com> is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 3, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On April 3, 2007, Compana LLC 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”), 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 April 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2007. The Response was filed with the Center on May 7, 2007. Subsequently, both parties forwarded supplemental submissions to the Center.

The Center appointed Richard G. Lyon as the sole panelist in this matter on May 23, 2007. Due to unforeseen circumstances, Mr. Lyon found it necessary to withdraw from the appointment. The Center appointed William R. Towns as the sole panelist on May 25, 2007. 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 the owner of the federally registered trademark GRAND THEFT AUTO. The United States Patent and Trademark Office (USPTO) issued a registration certificate for the mark on April 7, 1998, and the Complainant has used its mark since at least 1998 in connection with the popular “Grand Theft Auto” video game series. The Complainant also operates an official Grand Theft Auto website, for which the Complainant has registered the domain names <grandtheftauto.com>, <grandtheftauto3.com>, and <grandtheftauto4.com>.

The Respondent registered the disputed domain name <grandtheftauto6.com> on May 7, 2005. The disputed domain name resolves to what appears to be a parked “pay-per-click” portal site with advertising links to websites featuring products for the most part unrelated to the Grand Theft Auto video game series, including products that appear to compete with those of the Complainant. The record further reflects the Respondent’s registration of other domain names that appear to be common misspellings of third party trademarks.

On March 1, 2007, the Complainant by email sent the Respondent a cease and desist letter, requesting transfer of the disputed domain name. The Respondent, through its attorney on March 2, 2007, requested 15 days to respond to the Complainant’s letter, which the Complainant consented to. Thereafter, on March 20, 2007, the Respondent’s attorney indicated to the Complainant that the Respondent would not agree to a transfer of the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the GRAND THEFT AUTO trademark, which was registered by the USPTO on April 7, 1998, and which the Complainant has used exclusively with the popular Grand Theft Auto video game series. Starting with Grand Theft Auto in 1998, the series has included GTA2, Grand Theft Auto III, and the soon to be released Grand Theft Auto IV. According to the Complainant, the last title in the Grand Theft Auto series sold over 13 million copies worldwide.

According to the Complainant, since 1998 the GRAND THEFT AUTO trademark has been used extensively around the world on television, the internet, in magazines and in various other media, and the Complainant has spent millions of dollars in advertising and promotions involving the GRAND THEFT AUTO mark. The Complainant also has registered <grandtheftauto.com> for use with GRAND THEFT AUTO branded products and the official Grand Theft Auto website.

The Complainant contends that the disputed domain name is identical to its GRAND THEFT AUTO mark. The Complainant states it has not authorized the Respondent to use the GRAND THEFT AUTO mark. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent registered the disputed domain name seeking to exploit and profit from the Complainant’s mark by diverting internet traffic to a pay-per-click website with advertising links to products predominantly unrelated to Grand Theft Auto. The Complainant also alleges that the Respondent is guilty typosquatting, having registered multiple domain names that infringe on third-party trademark rights, including: <hotjop.com> (HOT JOBS); <wiki-pedia.com> (WIKOPEDIA); and <singoporeair.com> (SINGAPORE AIR).

B. Respondent

The Respondent, without any admission as to the three elements of paragraph 4(a) of the Policy, makes an offer of “unilateral consent to transfer”. The Respondent contends that it was not contacted by the Complainant prior to the institution of this proceeding, and would have agreed to transfer the domain name had it been so contacted.

 

6. Procedural Issues

A. Supplemental Submissions

Upon its receipt of the Response, the Complainant forwarded to the Center an unsolicited supplemental email submission, contesting the Respondent’s allegation that no request for transfer of the domain name had been made prior to the institution of this proceeding and objecting to a transfer of the domain name without consideration of the three elements of paragraph 4(a) of the Policy. The Respondent in turn has objected that the Complainant’s supplemental submission violates the Rules and should be stricken.

No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental submissions by either party to the administrative proceeding without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. The Policy, the Rules and relevant panel decisions demonstrate a strong preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.

As noted above, the Respondent’s takes the position that the Panel should transfer the domain name without consideration of the three elements of paragraph 4(a). The Panel believes it is appropriate to allow the Complainant to respond to the Respondent’s position, which was raised for the first time in the Response. Accordingly, the Panel accepts the Complainant’s supplemental submission for the limited purpose of noting the Complainant’s objection to the Respondent’s “unilateral consent to transfer”.

B. Respondent’s Consent to Transfer

The Respondent, relying on The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, requests that the Panel order the transfer of the disputed domain name without consideration of the paragraph 4(a) elements, arguing that a “genuine unilateral consent to transfer” under paragraph 10 of the Rules would be the most expeditious course. As noted above, the Respondent alleges that it would have agreed to a transfer of the domain name had such been requested by the Complainant.

While a “unilateral consent to transfer” might prove expeditious, it may not be the most appropriate means of resolving the case if there is some reason to doubt the genuineness of a respondent’s consent. See, e.g., Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745. The record indisputably reflects that the Complainant sought the transfer of the domain name prior to commencing this proceeding, and that the Respondent flatly declined to transfer the domain name.

The foregoing causes the Panel to doubt the genuineness of the Respondent’s purported consent. Accordingly, given the Complainant’s objection to the Respondent’s position, the Panel’s will base its decision on whether the three elements of paragraph 4(a) have been satisfied.

 

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <grandtheftauto6.com> is confusingly similar to the Complainant’s registered GRAND THEFT AUTO mark. The Complainant beyond question has established rights in its mark through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

For purposes of paragraph 4(a)(i) of the Policy, identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. See also Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068.

The Panel finds that the disputed domain name, which incorporates the Complainant’s mark in its entirety, is confusingly similar to the Complainant’s mark. The addition of the numeral “6” does nothing to dispel this confusing similarity, and in fact mimics the Complainant’s corresponding use of numerals to identify titles in the Grand Theft Auto video game series.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, the Complainant is required make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). It is undisputed that the Complainant has not authorized the Respondent to use the Complainant’s GRAND THEFT AUTO mark or to register domain names corresponding to this mark. The disputed domain name incorporates the Complainant’s mark in its entirety, and is being used by the Respondent to divert internet users to a pay-per-click website with advertising links to products unrelated to the Grand Theft Auto video game series, including some products that compete with those of the Complainant. As noted above, there is also evidence in the record from which it fairly may be inferred that the Respondent has engaged in a form of abusive domain name registration commonly known as “typosquatting”.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under Paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under Paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(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 Respondent has offered no evidence of any legitimate use of the dispute domain name that might fall within the safe harbor provisions of paragraph 4(c). The Respondent’s selection a domain name that is confusingly similar to the Complainant’s distinctive GRAND THEFT AUTO mark, and its use to attract internet traffic to a pay-per-click portal website does not constitute a bona fide offering of goods or services under paragraph 4(a)(i). The Respondent makes no claim to be making a legitimate noncommercial or fair use of the disputed domain name under paragraph 4(a)(iii); nor does the Respondent claim to have been commonly known by the domain name under paragraph 4(a)(ii).

The Panel finds that the Respondent has failed to meet its burden under paragraph 4(c) of establishing rights or legitimate interests in the disputed domain name. Accordingly, the Panel deems that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) 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 circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel finds from the totality of the circumstances in this case that the Respondent was aware of the Complainant’s distinctive GRAND THEFT AUTO mark at the time of the domain name registration, and that the Respondent’s aim in registering the disputed domain name was in all likelihood to profit from and exploit the Complainant’s trademark, by attracting internet traffic to the Respondent’s pay-per-click portal website. This constitutes bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <grandtheftauto6.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: June 8, 2007