Take-Two Interactive Software, Inc. lost its attempt to grab the domain name valiant-ent.tv  which  was registered on August 18, 2013.

Its an interesting opinion and one of the first times I have ever read a UDRP decision where the panel recognizes that a company that allows its domain to drop is at least partially to blame:

“The Panel finds that the Complainant’s failure to renew its domain registration and not act promptly in re-registering the name is, realistically, a causative element in the Respondent’s own action in establishing its fan site at the disputed domain name.”

“Having effectively cast the disputed domain name into the public arena where it could be registered by any party, the Complainant cannot now validly complain if two years later the Respondent (or any other third-party) registered the name for a legitimate use.”

Here are the facts and findings from the one member panel:

The Complainant, through a wholly-owned subsidiary Rockstar Games Inc., produces a number of apparently well-known video game series, including the MANHUNT series. The games in these series are distinguished by complex narratives that unfold in large virtual worlds depicting complex environments, politics, entertainment, race relations and other subjects. The games are essentially interactive movies in which the player is in the role of the main character and can influence the outcome of each game. Each game has its own unique storyline with original characters. The MANHUNT series consists of the MANHUNT and MANHUNT2 games released in 2003 and 2007, respectively.

The plot of MANHUNT games focuses on a death row inmate, James Earl Cash (“Cash”), who is abducted from prison by a company called Valiant Video Enterprises (“Valiant Video”). Valiant Video will film Cash as he fights his way past various assailants Valiant Video has put in his path. If Cash survives, he will earn his freedom. If he fails – or refuses to fight – Valiant Video will kill his family. Cash acts throughout the games at Valiant Video’s direction, though constantly trying to find a method of escape that will not harm his family. Valiant Video itself is the omnipresent villain of the MANHUNT games.

Prior to release of the MANHUNT game, the Complainant created a website for Valiant Video to promote that game. The domain name used for this site was <valiant-ent.tv> and the Complainant maintained and used the disputed domain name during 2003-2011.

In or about March 2011, the Complainant unintentionally allowed the registration for the disputed domain name to expire.

Visitors to the Complainant’s presumably main website encountered popup advertisements  for the valiant-ent.tv website, and, upon clicking on any of those pop-ups, those visitors were directed to the website at valiant-ent.tv.

The Complainant has provided, in Exhibit B to the Complaint, printouts from video game message boards where users discuss the Complainant’s Valiant Video website, its connection to the MANHUNT series and also the Complainant.

The Respondent registered the disputed domain name two years after the Complainant’s registration for that domain name expired.

In doing so, the Respondent registered the name through a privacy service provided by the Registrar in order, as noted in its Response, to “avoid spam, and more importantly to keep my private and business life separate”.

The disputed domain name resolves to the Respondent’s website  which Respondent states is a “fan site” for the MANHUNT series of games.

The website prominently depicts the disputed domain name near the top of its home page followed by an electronic bulletin board formed of series of what appear to be blog entries, primarily textual in nature, submitted by various corresponding individuals. Through these entries, these individuals seem to discuss aspects of the MANHUNT games.

Upon receiving a cease and desist email message from the Complainant dated August 29, 2013, the Respondent altered its website to include a disclaimer near the bottom of the home page (as shown in Exhibit E) which stated, “NOT Affiliated with Rockstar Games. Sorry, we make videos, not video games”.

A fundamental issue exists as to whether, under the evidence of record, either or both of the terms VALIANT VIDEO or VALIANT VIDEO ENTERPRISES, as used by the Complainant within its MANHUNT series of video games, have acquired sufficient distinctiveness in the gaming marketplace such that one or both of those terms have acquired legal status as common law trademarks.

Fortunately, based on the finding that the Respondent has rights and legitimate interests in the disputed domain name predicated on its use in conjunction with a valid fan site, the Panel need not and will not opine on either this issue or whether the Respondent’s use and registration of the name reflected bad faith — as both issues are now moot.

Despite the Complainant’s assertions to the contrary, the Panel finds that the Respondent has established its rights and legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy.

Contrary to the Complainant’s view, the Panel finds no evidence from the pages of the Respondent’s website provided by the Complainant, in Exhibits D and E to the Complaint, that the Respondent is undertaking any commercial activity whatsoever through its website.

The website appears to be just what the Respondent says it is: a fan site, nothing more.

The site provides commentary of users, in the form of a series of primarily textual blog entries regarding the Complainant’s MANHUNT games.

The Panel does not opine on any specific characteristic of the commentary, as doing so lies outside the Panel’s rather narrow purview, but limits its view to the website’s general nature, the latter sufficing for the Panel to assess the purpose of the Respondent’s website in analyzing the Respondent’s use of the disputed domain name under the Policy.

Further, the Panel finds that the Complainant’s failure to renew its domain registration and not act promptly in re-registering the name is, realistically, a causative element in the Respondent’s own action in establishing its fan site at the disputed domain name.

Though the Panel does not question — nor does the Respondent — that the Complainant’s failure was inadvertent, nevertheless, it stands to reason that if the Complainant accorded sufficient importance, whether commercial or otherwise, to the disputed domain name, then the Complainant would have taken appropriate and sufficient steps to either prevent its registration to that name from expiring in the first instance back in 2011 or simply re-register the name within the two year period that elapsed between the time the Complainant’s registration to the name expired in 2011 and August 18, 2013 when the Respondent registered the name.

The Complainant did neither.

Having effectively cast the disputed domain name into the public arena where it could be registered by any party, the Complainant cannot now validly complain if two years later the Respondent (or any other third-party) registered the name for a legitimate use, including as here, a fan site for the Complainant’s own MANHUNT series of games.

The Respondent, by registering the name, did not prevent the Complainant from reflecting either of its marks — to the extent the Complainant has any common law trademark rights in either of the terms VALIANT VIDEO or VALIANT VIDEO ENTERPRISES — in a domain name; the Complainant’s inaction over a sufficiently long period of time simply did so itself.

Additionally, there is no evidence of record in the Respondent’s website that the Respondent is intentionally misrepresenting itself as being associated with the Complainant, nor has the Complainant provided any other evidence of record supporting such misrepresentation.

Nevertheless, in response to a concern harbored by the Complainant and stated to the Respondent that visitors to the Respondent’s site might perceive such an association, the Respondent then inserted a disclaimer in its home page disavowing such association.

Under the specific facts of the record here and particularly given the general nature of the commentary provided on the Respondent’s website and its absence of any commercialization whatsoever or intentional misrepresentation of the Complainant, the Panel finds that: (a) the Respondent’s website is a valid fan site; and (b) the Respondent’s use of the disputed domain name (arguably being confusingly similar to the terms VALIANT VIDEO or VALIANT VIDEO ENTERPRISES — again assuming that the Complainant has any common law trademark rights in either of the terms) in conjunction with that site is a fair use.

Further, there is no evidence of record that the Respondent’s use of the name in any way tarnishes whatever trademark rights, if any, the Complainant has in either of those terms.

Consequently, the Respondent’s use of the disputed domain name to address a valid fan site falls squarely within the ambit of paragraph 4(c)(iii) of the Policy and thus is legitimate.