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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Take-Two Interactive Software Inc. v. Name Administration Inc.

Case No. D2010-0845

1. The Parties

The Complainant is Take-Two Interactive Software Inc. of New York, New York, United States of America, internally represented.

The Respondent is Name Administration Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Esq., United States of America.

2. The Domain Name and Registrar

The Domain Name <bioshock.com> is registered with iRegistry Corp. (fka) Domain Name Sales Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2010. On May 26, 2010, the Center transmitted by email to iRegistry Corp. (fka) Domain Name Sales Corp. a request for registrar verification in connection with the Domain Name. On May 26, 2010, iRegistry Corp. (fka) Domain Name Sales Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. The Response was filed with the Center on June 17, 2010.

The Center appointed Luca Barbero, M. Scott Donahey and Alan L. Limbury as Panelists in this matter on July 21, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Take-Two Interactive Software Inc., a corporation organized and existing under the laws of Delaware with its main place of business in New York. The Complainant is a developer of interactive entertainment software, including the video game series BioShock, and is the owner of the United States Trademark Registration BIOSHOCK No. 3,410,583 of April 8, 2008, filed on November 16, 2005, in International classes 9 and 41 and of the Community Trademark BIOSHOCK No. 006247969 of September 4, 2008, filed on September 7, 2007, in classes 9, 16, 28 and 41.

According to the WhoIs database, the Domain Name <bioshock.com> was first registered on October 23, 2002. As explained by the Complainant, the Domain Name was initially registered in the name of the company Chem-Pro, Inc. which remained the registrant until October 30, 2004, when the Domain Name, which had not been renewed, was listed as “Pending Renewal or Deletion” and ultimately registered by the Respondent on December 6, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant informs the Panel that the trademark BIOSHOCK was first filed on November 16, 2005, but that the release of the BioShock videogame was first announced to the public on October 8, 2004. The Complainant encloses screenshots from a blog published at “www.irrationalgames.com”, on which a post dated October 11, 2004 stated “Late last week, Gamespot ran an excellent System Shock II Retrospective. On Friday, they carried the announcement of IG’s newest baby, BioShock!”. The Complainant also attaches to the Complaint an article dated October 8, 2004 published at “www.gamespot.com” reporting the first impressions on the new BioShock game and an interview with the game developer published at “www.ign.com”, dated October 11, 2004.

The Complainant states that the game BioShock has garnered enormous interest among consumers, having sold millions of copies to date and named among the “best games” by the magazines PC Gamer and Gaming Magazine. A sequel to the original game, BioShock 2, has also been developed.

The Complainant contends that the Domain Name <bioshock.com> is identical to the trademark BIOSHOCK in which Complainant has rights as it reproduces the trademark BIOSHOCK in its entirety. The Complainant also states that the reproduction of the BIOSHOCK trademark is likely to increase the confusion among Internet users and attaches to the Complaint, as supporting evidence, a copy of a mock-up made by an unrelated third party of the BioShock videogame box art including the web address “www.bioshock.com” and a screenshot of the “Alexa.com” database demonstrating that several of the sites linking to the Domain Name are videogame and videogame news-related.

The Complainant also states that, “although Complainant’s formal trademark rights date back to the filing date of the November 16, 2005, for the purposes of the UDRP, Complainant’s rights in the BioShock name date back to the widespread publicity about the game beginning October 8, 2004”. The Complainant submits that, in view of the widespread reference to the trademark BIOSHOCK in the media and the extensive advertising of BioShock and the sequel BioShock2, the trademark BIOSHOCK “has come to be recognized and relied upon by the trade and the public as identifying its products and as distinguishing its products from those of others”.

With reference to the rights or legitimate interests in respect of the Domain Name, the Complainant states that there is no relationship or affiliation between the Complainant and the Respondent and that the Respondent was not granted any license, permission or other right to use any domain name incorporating the Complainant’s trademark. According to the Complainant, the only reason for the Respondent’s use of the Domain Name is to trade off the value and goodwill of the Complainant’s BIOSHOCK trademark by diverting users to third-party commercial websites for profit.

As to the circumstances evidencing bad faith, the Complainant states that, in light of announcements in blogs and on videogame web sites, and of the subsequent press and fan attention, the Respondent ought to have been aware of the trademark BIOSHOCK when, “two months after the media coverage,” it registered the Domain Name. The Complainant contends that such registration was aimed at capitalizing financially on the announcement of the release of the BioShock videogame by diverting Internet users to third-party web sites through the pay-per-click system.

The Complainant also states that the Respondent engaged in cybersquatting activities in the past, registering domain names confusingly similar to other third party trademarks, and cites the decision Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216, in which the Respondent’s registration and use of the domain name <chillibeans.com> was found in bad faith. The Complainant explains that, in certain other WIPO cases in which the Respondent was successful, the domain names registered were constituted by descriptive terms and connected to websites where content related to the textual string of the domain names, and irrelevant to any trademark, was published.

The Complainant also addresses the issue of the domain name registrations through automated programs that “snap up” domain names, including domain names identical to trademarks, as they become available, stating that the “Respondent cannot shield itself from a finding of bad faith simply because it registers a large number of domain names”.

As an additional circumstance evidencing bad faith, the Complainant states that the Respondent has been using robots.txt to block the Complainant’s and the Panel’s access to the Domain Name’s historical web pages.

The Complainant also highlights that, in the correspondence with the Respondent prior to the filing of the Complaint, the Respondent disclosed to the Complainant that its business included acquiring domain names through bulk transfers, through which it had also acquired the domain name <taketwointeractive.com>, confusingly similar to the name and to the registered T2 TAKE TWO INTERACTIVE and T2 TAKE TWO trademarks owned by the Complainant. The Complainant informs the Panel that the domain name <taketwointeractive.com> was redirected by the Respondent to the web site “www.ign.com”, a popular online resource for videogame information, and that the Respondent relinquished the domain name to the Complainant after receiving the Complainant’s letter.

B. Respondent

The Respondent rejects the Complainant’s statements and first points out that the Domain Name was acquired by the Respondent prior to any trade or service mark right of the Complainant. The Respondent underlines that the earliest of the two trademark registrations for BIOSHOCK owned by the Complainant, the United States Trademark Registration No. 3,410,583, was filed by the Complainant in November 2005 on an intent-to-use basis, since when the Complainant alleges having actually used the mark, as per trademark certificate attached to the Complaint, commencing August 21, 2007, nearly three years after the domain name was acquired. The Respondent states that the filing as an intention-to-use is not apt to confer trademark rights, since “the suggestion that such an announcement acts as some sort of placeholder ‘right’ for the nearly four years before the Complainant actually released a product would not only confer such a ‘right’ against all known principles of trademark law, but would do so apparently for an indefinitely long period of time”.

The Respondent highlights that the phrase BIOSHOCK is not exclusive to the Complainant since, before the use by the Complainant in connection with computer games, third parties were interested in the Domain Name, including Chem-Pro, Inc., the chemical company which first registered the Domain Name in 2002, and the company Johnson & Johnson, which had expressed interest in the Domain Name in view of its trademark application for BIOSHOCK in connection with hand and skin cleanser, ultimately abandoned by the company in 2007. The Respondent underlines that today numerous trademark registration applications have also been filed for the trademark BIOSHOCK in connection with different goods and services, e.g., nutritional products.

With reference to rights or legitimate interests in respect of the Domain Name, which is constituted by a common prefix and a common word, the Respondent states that it has not used the Domain Name for an infringing purpose, since the Domain Name has been continuously associated by the Respondent with subject matter suggested by its constituent terms, relating to biological scientific subject matter, as evidenced by the historical record stored by DomainTools.com (attached by the Respondent to its Response).

As to the prior cases involving the Respondent cited by the Complainant, the Respondent states that the Balglow Finance S.A. case (supra) cited by the Complainant is not dispositive as the matter is now the subject of continuing litigation in Grand Cayman since the underlying mark asserted in that case has been cancelled as invalid by the European Trademark Office.

With reference to the registration and use of the Domain Name in bad faith, the Respondent states that it could not be aware of the blog chatter in October 2004 and of the announcement in late 2004 which are alleged by the Complainant to be the basis for the timing of the domain name registration. The Respondent specifies that the Complainant’s announcement, in the form of an interview with the game designer who stated that he was developing a successor to a game published by “Irrational Gaming” which he intended to call “Bioshock”, was not associated with the Complainant until 2005.

The Respondent also states that, despite the Complainant’s statement regarding the Respondent’s use of robots.txt, records of prior use of the Domain Name are available through the DomainTools.com web site, providing the Panel with evidence of the searches conducted.

As an additional circumstance evidencing its good faith, the Respondent highlights that it had been first contacted by the Complainant through an investigator, who made an offer to purchase the Domain Name, and that Respondent did not agree to transfer it since a prior claim as to the Domain Name had been asserted by Johnson & Johnson and the transfer to the Complainant would have appeared an attempt to avoid its claim.

The Respondent informs the Panel that, after Johnson & Johnson abandoned its trademark application in 2007, the Respondent continued to use the Domain Name absent any conflict with the Complainant’s interest in videogames. Instead, upon being contacted concerning the domain name <taketwointeractive.com>, the Respondent, in light of the prior Complainant’s trademark registrations, immediately arranged to transfer the domain name to the Complainant free of any charge.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the United States Trademark Registration BIOSHOCK No. 3,410,583 of April 8, 2008, filed on November 16, 2005, in International classes 9 and 41 and of the Community Trademark BIOSHOCK No. 006247969 of September 4, 2008, filed on September 7, 2007, in classes 9, 16, 28 and 41.

Both trademark registrations are dated after the Domain Name Registration by the Respondent, which is dated December 6, 2004.

However, as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4, the “registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind” (see, i.e., Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 and River Island Clothing Co. Limited v. Name Administration Inc. (BVI), WIPO Case No. D2007-1293, involving the same Respondent).

In light of the above, the Panel finds that the Domain Name is identical to the trademark BIOSHOCK in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

For the reasons detailed in the next paragraph, it is not necessary for the Panel to address this issue.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As stated, supra, the Complainant has not proven the ownership of prior trademark rights to the Domain Name. In fact, the first trademark registration for BIOSHOCK was filed, as an intention-to-use, on November 16, 2005, about one year after the registration of the Domain Name by the Respondent, and the first use in commerce claimed by the Complainant was August 21, 2007, as evidenced in Annex G to the Complaint.

Moreover, the Panel finds that the publication of an interview with the game developer and the announcements of the release of the Bioshock videogame in certain blogs and on videogame web sites described by the Complainant are insufficient on their own to establish a common law trademark right prior to the date of the Domain Name registration. Nor has the Complainant provided additional evidence to support this argument.

In light of the timing of the Complainant’s trademark registrations, the announcements described above, 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 companies, including Johnson & Johnson, prior to the Complainant, to identify products different from videogames (e.g., cleaning products, nutritional products, etc.). The Panel also finds it persuasive that, in an effort to demonstrate good faith, the Respondent promptly transferred the domain name <taketwointeractive.com> to the Complainant without monetary demands when it believed the claim to that domain name to be justified.

However, even if the Respondent had been made aware of the Complainant’s BioShock game from the statement made by the game developer, it would nevertheless have been insufficient to establish the Respondent’s bad faith. In fact, the Respondent’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.

See, along these lines, Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (“In registering the domain name, therefore, the Respondent reasonably believed that his proposed services were unlikely to cause confusion with, or trade on, “Gold Line” as a mark for other, unrelated products and services”). See also Promatic International Limited v. Name Administration Inc., WIPO Case No. D2006-0673, in which the panel found, as to the domain name <promatic.com> registered by the Respondent and redirected, as in this case, to a landing page with pay-per-click links: “here there is no evidence nor suggestion that the reason why the Domain Name was registered (whether automatically or otherwise) was as a result of any goodwill or reputation that the Complainant has built up in the name”.

Based on the facts and circumstances set out above, and having examined all the annexes and pleadings, the Panel finds that the Complainant has failed to prove that the Domain Name was registered and used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Luca Barbero
Presiding Panelist

M. Scott Donahey
Panelist (Concurring)

Alan L. Limbury
Panelist

Dated: August 6, 2010

CONCURRING OPINION

I concur completely with the cogent opinion prepared by the Presiding Panelist. I only wish to add that I believe the application of the Octogen analysis would arrive at the same result.

M. Scott Donahey
Panelist (Concurring)
Dated: August 6, 2010

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