Take-Two is the developer behind the successful BioShock video game series. The first-person shooter game was announced in October 2004, two months before the domain name Bioshock.com was registered by Name Administration Inc, a Cayman Islands-based company that makes money from trading in and displaying adverts on its massive network of domain names.
Take-Two holds trade mark registrations for the term, but these were filed almost a year after the domain name was registered, so could not serve as prior trade mark rights to the domain name.
Name Administration, also known as NAmedia, denied any knowledge of the game's announcement at the time of registering the domain name.
It noted in its defence that the term Bioshock is not exclusive to Take-Two, citing interest in the name from pharmaceutical giant Johnson & Johnson, which applied the term to a hand and skin cleanser, and use by other parties in connection with goods including nutritional products. The website at Bioshock.com displays science-related adverts.
An arbitration panel of the World Intellectual Property Organisation said that Take-Two had failed to prove that the name was being used in bad faith. It wrote: "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."
The three-member panel added: "However, even if [Name Administration] had been made aware of [Take-Two's] BioShock game from the statement made by the game developer, it would nevertheless have been insufficient to establish [Name Administration's] bad faith. In fact, [Name Administration's] use of the Domain Name is connected to a web site that does not seek to trade on the goodwill of the underlying trademark since it is associated with fields other than computer games and consistent with the scientific fields conjured up by the constituent components of Domain Name."
In correspondence that took place between the parties before the complaint was filed, it was revealed that Name Administration also owned the domain name Taketwointeractive.com. Name Administration told Take-Two that this name was acquired through a bulk transfer of domain names. It relinquished that name to Take-Two after receiving its letter.
Take-Two cited Name Administration's ownership of that name as evidence of a pattern of bad faith. But the WIPO panel disagreed. It suggested that the transfer to Take-Two of the name taketwointeractive.com, "without monetary demands," demonstrated good faith.