Take-Two Interactive Loses Battle over BioShock.com: No Grand Theft Domain

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 as stated by USPTO filings. But the firm claimed there was online chatter regarding the release of a fresh game called BioShock prior to Frank Schilling’s Name Administration acquiring the domain name in 2005.

Furthermore, consumer products firm Johnson & Johnson had contacted Schilling regarding 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 sizable firms 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 [regarding 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 “shock”, is not exclusive to the Complainant, since, as highlighted by the Respondent, it has been selected and used by other firms, counting 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.