In an arbitration battle this week, Take-Two Interactive lost its fight for Bioshock.com to professional domain name purchaser, Name Administration Inc.
Name Administration is a Cayman Islands based company, that makes money from trading in and displaying advertisements on its massive network of domain names.
Normally, this type of business is not the expected winner in an escalation case.
Consider that Bioshock.com was acquired by Name Administration in December 2004. Coincidentally, this acquisition ocurred a shortly after rumors of Bioshock the game began circulating in October of that year.
Name Administration made sure to note that the term Bioshock is wanted by more entities than Take-Two; Johnson & Johnson applied for the name at one point for their skin cleanser, and some companies nutritional products.
Perhaps most confusing is that Take-Two holds the trade mark registration for the Bioshock, but it was filed almost a year after the actual domain name was registered.
This fact assured that the TM could not serve as prior trade mark right to the domain name in this case.
Factor in that earlier this year, Take-Two’s lawyers acted to have the website transferred away from Name Administration.
This then led to arbitration proceedings before the World Intellectual Property Organisation (WIPO) in May of 2010.
WIPO decided that Take-Two failed to prove that bioshock was being used in bad faith.
WIPO added that even if Name Administration had been made aware of the BioShock game it would still have been insufficient to establish bad faith.
Currently the use of the bioshock.com does necessarily infringe on the underlying trademark since it is associated with elements other than computer games.
To make their argument, Take-Two would have to have proven the following:
1. Prove that the intent of registering Bioshock.com was identical or confusingly similar to a trademark or a service that Take-Two has a trademark to.
2. Demonstrate that Name Administration has no rights to or legitimate interests with respect to bioshock.com.
3. Show that the Bioshock website was registered and being used in bad faith.
WIPO agreed with Take Two on point one, but not two and three.
What is the outcome?
Take-Two will be forced to continue using bioshockgame.com as their domain to represent their game.
I would not feel too sorry for Take Two, however, as they are not doing an effective job at protecting their mark.
Consider that a quick search reveals that at the time of this writing, bioshock.mobi is still available; purchasing domains like this would demonstrate that Take-Two was actually interested in protecting its mark, and acting in good faith for the next time they need to escalate.
Amazingly, for their next release, bioshock2 is squatted all over the place as well; at the time of this writing, bioshock2.biz and bioshock2.mobi were still available.
Worse than that, bioshockgame.net, .org, .biz, .info,.mobi and .us are all available, and this is now their core name to represent the bioshock game.
I know it looks and seems easy, but intellectual property is best left to professionals, and the expense, in the long run, will seem cheap in comparison to the loss.
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