Complainant:
Rockstar Games
USA
Respondent:
USA
A Complaint in respect of
On 3 January 2008 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 9 January 2008. I was appointed as Independent Expert as of 16 January 2008 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
There are no outstanding formal or procedural issues.
The Complainant ("Rockstar") is a wholly-owned subsidiary of Take Two Interactive Software Inc ("Take Two"). It is a world-famous developer and publisher of video games including Grand Theft Auto. Rockstar has a game design studio in London known as "Rockstar London". Take Two is the registered proprietor of US trade marks including ROCKSTAR GAMES registered in November 1999 and operates websites at www.rockstargames.com and www.rockstarlondon.com.
According to the Nominet WhoIs database, the Domain Name was registered on 1 December 2005. At the date of the Complaint the Domain Name resolved to a domain parking web site with links to other websites under various headings including "Rockstar Video Games" and "Grand Theft Auto London".
Complainant
A summary of the contentions made in the Complaint is as follows:
The Complainant is one of the world's most successful video game developers and publishers. Rockstar develops and publishes software for all ages and levels of play and produces some of the most popular and best-selling video games including Grand Theft Auto. The last instalment of the Grand Theft Auto video game series sold over 13 million copies worldwide at full price in the first year.
The Complainant owns numerous US federal registrations and applications for trademarks comprising the word ROCKSTAR including US Reg No. 2,456,387 ROCKSTAR GAMES registered as of 15 November 1999 and US Reg No. 2,855,543 R ROCKSTAR GAMES and Device registered as of 14 May 2002. Its various ROCKSTAR marks have been used around the world since 1999.
The Complainant develops games at game design studios that are designated with the name of the location, including ROCKSTAR SAN DIEGO, ROCKSTAR TORONTO and ROCKSTAR LONDON. The ROCKSTAR LONDON mark has been used extensively, including on video games and to identify the website of the Rockstar London studio.
The Domain Name is identical to the name ROCKSTAR LONDON and confusingly similar to the name ROCKSTAR GAMES.
The website associated with the Domain Name contains nothing other than Google sponsored links and other advertising. Many of the links and advertising use the Rockstar Marks, including GRAND THEFT AUTO and ROCKSTAR GAMES. The Domain Name was registered shortly after the Complainant announced that it had opened a studio in London.
There is no indication that the Respondent has ever been commonly known by the name ROCKSTAR LONDON. The Domain Name is being used in a confusing and deceptive manner to mislead Internet users searching for the Complainant's website for the Respondent's financial gain. The Respondent is a cybersquatter who seeks to take advantage of the owner of a famous mark and confuse Internet users. Once these unsuspecting and deceived Internet users arrive at the Respondent's web site, the Respondent seeks to profit from the user's confusion by displaying pay-per-click advertising links that mention products the same as or substantially similar to the Complainant's products.
The acts of the Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of Complainant.
Respondent
The Respondent has not filed any response to the Complaint.
General
Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure. Under Paragraph 15c of the Procedure, the Complainant is still required under clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law".
The Complainant has adduced uncontroverted evidence of registrations of US trade marks in respect of ROCKSTAR GAMES and widespread use of the marks ROCKSTAR and ROCKSTAR LONDON in connection with the marketing and sales of its popular world-renowned, video games. In the circumstances, I find that the Complainant does have sufficient Rights in ROCKSTAR and ROCKSTAR LONDON that would ground a claim in passing off under English law.
Ignoring the suffix ".co.uk" the Domain Name comprises ROCKSTAR and is identical to ROCKSTAR LONDON. Accordingly, I am satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3 of the Policy. These include:
3ai Circumstances indicating that the Registrant has registered or otherwise acquired the Domain Name primarily:
C. for the purpose of unfairly disrupting the business of the Complainant; and
3aii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and
The Respondent has not answered the Complaint and there is, therefore, no explanation as to the circumstances in which the Domain Name was registered. The Domain Name, however, resolves to a domain parking web page that uses a search engine to draw up a list of links to websites that includes a number of third party websites that are associated with the Complainant or its products.
It seems to me to be self evident that the Respondent has set up the website with a view to commercial gain from per-click payments resulting from visitors visiting the website. Although the Domain Name comprises two common words – rockstar and London – I accept that the most likely reason for an Internet user typing in the phrase "rockstarlondon" as a domain name (with the .co.uk suffix) is because they are familiar with the Complainant's brand names and assume that the Complainant will have a website at www.rockstarlondon.co.uk dedicated to its video game products.
The very essence of setting up the website must be that it does result in commercial gain as a result of visitors accessing other websites through the portal. In view of the popularity of the Complainant's video games and its use of Rockstar Games and Rockstar London to promote those games, I consider it most likely that the Respondent had the Complainant's mark in mind when it registered the Domain Name
I am satisfied on balance that the Domain Name was registered and is being used in order to take unfair advantage of the attractive force of the Complainant's mark for financial gain, by confusing people into believing that the Domain Name is registered by or is in some way connected with the Complainant. Such activity is also likely unfairly to disrupt the business of the Complainant, particularly if visitors to the Respondent's website are led to websites offering products of the Complainant's competitors.
In the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights in the names ROCKSTAR and ROCKSTAR LONDON and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. I therefore determine that the Domain Name be transferred to the Complainant Rockstar Games.
Ian Lowe
28 January 2008