Take-Two Interactive Software, Inc. the maker of Grand Theft Auto just lost a UDRP on the domain, gta.tv.
The disputed domain name was registered on March 19, 2010.
The Respondent also owns some domain names since 2009, particularly the following: DOMAIN NAME gtanews.com and gta411.com
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.
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 facialbook.com, citilinktravels.com, canadaairtravel.ca and saveon.org.
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
The Complainant asserts that the Respondent registered other domains that likely infringe the rights of third parties, such as facialbook.com, citilinktravels.com, canadaairtravel.ca and saveon.org.
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 facialbook.com resolves to a page with contents regarding “Facial skin care”, “Beauty tips”, “Facial treatments”, and the like; citilinktravels.com 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. canadaairtravel.ca 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 saveon.org is inactive.
Some other cases like e6ay.com, gocities.ca, espan.ca, linkdir.ca, and americancapital.ca, 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.
For the foregoing reasons, the Complaint is denied.