Take-Two Interactive Software Loses UDRP on GTA.TV Domain Name

Take-Two Interactive Software, Inc, the video game publisher behind the “Grand Theft Auto” games, has just lost a UDRP on the domain name GTA.TV.

 

According to whois records,the domain name was registered on March 19,2010 and the current registrant is iCity Corp.The complaint was filed with the WIPO Arbitration and Mediation Center on August 14,2013.

If up until now Take-Two has had a lot of success using UDRP to get domains that include the “GTA” term,in this case Take-Two Interactive Software lost the case.That’s because in previous cases there were other words in the domain that made it clear the Grand Theft Auto game was being targeted.

Take-Two Interactive argued 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 <facialbook.com>, <citilinktravels.com>, <canadaairtravel.ca> and <saveon.org>.”
  • 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 <facialbook.com>, <citilinktravels.com> and <saveon.org>, which consist on prima facie evidence of a pattern of bad faith registration.

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.
  • 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 <gta.tv> 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 <gta.tv>.
  • 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.”

The Panel found that the complainant has failed to prove the three elements required.