No Grand Theft Domain: Take-Two Interactive Loses Battle over BioShock.com
Friday, August 20th, 2010
Video game publisher loses arbitration for BioShock.com domain name.
Take-Two Interactive Software, publishers of the Grand Theft Auto series and BioShock, have lost a domain name arbitration case to get the domain name BioShock.com.
Take-Two filed for a trademark on BioShock back in 2005 on an intent-to-use basis, and first used the mark in commerce in 2007 according to USPTO filings. But the company claimed there was online chatter about the release of a new game called BioShock prior to Frank Schilling’s Name Administration acquiring the domain name in 2005.
Furthermore, consumer products company Johnson & Johnson had contacted Schilling about the domain name prior to the complaint when J & J filed a trademark for BioShock for other purposes, which was ultimately abandoned. Thus, you basically had two large companies wanting rights to the same generic domain name for two different purposes. That is good evidence that it’s a generic domain.
The three person World Intellectual Property Organization panel ruled that the domain name wasn’t registered in bad faith:
In light of the timing of the Complainant’s trademark registrations, the announcements described above [about the game on various web sites], and the content published on the web page linked to the Domain Name, where links related to scientific content are published, the Panel is not persuaded that the Respondent had in mind the Complainant’s trademark BIOSHOCK at the time of its registration of the Domain Name.
Moreover, the Panel finds that the mark BIOSHOCK, which is constituted by joining the prefix “bio†with the word “shockâ€, is not exclusive to the Complainant, since, as highlighted by the Respondent, it has been selected and used by other companies, including Johnson & Johnson, prior to the Complainant, to identify products different from videogames (e.g., cleaning products, nutritional products, etc.).
John Berryhill argued the case on behalf of Schilling.
Further Reading:
- HP Loses First Round of HP Pre Battle
- Register.com Loses Register.cc Battle
- Baby Products Company Loses Battle Against Bisexual Web Site
Tags: Frank Schilling, udrp, wipo
Knowing John’s bio, that comes as no shock
It’s yet another example of the possibilities regarding decisions, even when tm’s are involved.
The decision may have the world’s brief concurring opinion.
I had the privilege of sitting with the esteemed Mr. Berryhill at DomainFest lunch (as well as two of the other best IP lawyers on the planet). It was great to see him again. He really is unbeatable.
Congrats to Frank and John!
haha domainers 1 big corps 0. real glad frank had the $ to fight them.
trouble is, now the domain gets to stay as a parking page forevermore.
If the complainant had been given the opportunity to buy the domain at a fair price then they deserve criticism, but one wonders whether such was the case.
@ rational – Frank sells domains if the price is right, so I don’t think this was one of those cases.
“buy the domain at a fair price”
Most of the time, TM owners feel anything quoted more than a few dollars is extortion and they refuse to pay it.
Even though, the domain is worth much more than a few dollars.