Take Two loses battle over Bioshock.com

What happens if you go to www.Bioshock.com?  You don’t get a website dedicated to the Bioshock series of games, that’s what.  And now you still won’t in the future…
…because Take-Two Interactive, publisher of the Bioshock series, has lost an attempt to obtain www.bioshock.com from a professional domain name purchaser known as Name Administration Inc.
Name Administration (aka NA Media), a Cayman Islands company, acquired Bioshock.com in December 2004, a few months after rumours of Bioshock 1 began to circulate in October 2004.  Earlier this year, Take-Two instructed lawyers to seek to have the website transferred to it and away from Name Administration.  This led to arbitration proceedings before the World Intellectual Property Organisation (WIPO) in May 2010 (the WIPO being for present purposes a body which adjudicates on disputes over ownership of websites).  The Panel’s judgment has just been released – read on for a summary…
The legal bit
In a nutshell, in order to have Bioshock.com transferred to it, Take-Two had to demonstrate that:
(i) that the Bioshock website registered by Name Administration is identical or confusingly similar to a trademark or a service in which Take-Two has rights; and
(ii) that Name Administration has no rights or legitimate interests in respect of the Bioshock website; and
(iii) that the Bioshock website has been registered and is being used in bad faith.
Take-Two’s arguments
  • As you would expect, Take-Two’s principal argument was that “the only reason for [Name Administration’s] use of the Domain Name is to trade off the value and goodwill of [Take-Two’s] Bioshock trademark by diverting users to third-party commercial websites for profit.”  The trademarks in question had been registered by Take-Two in 2005, some time after Bioshock 1 was announced. 
  • Take-Two also argued that Name Administration had been found to have cyber-squatted a number of other websites in the past.  For example, Take-Two said that Name Administration had also acquired the website taketwointeractive.com! (Although in fairness, that site was given to Take-Two on request).
Name Administation’s arguments
  • Name Administation pointed out that it had acquired the Bioshock.com website substantially prior to Take-Two acquiring any Bioshock trademarks (which weakened Take-Two’s argument that the cyber-squatting of the website infringed their trademarks, if those trademarks in fact had been acquired after the cyber-squatting began).
  • Name Administration also argued that the name ‘Bioshock’ was not exclusive to Take-Two or to a gaming context, as it is also meaningful and used in a pharmaceutical and scientific research context (in fact, Bioshock.com itself shows pharmaceutical adverts).  In that regard, the WIPO panel noted for example that “the company Johnson & Johnson…had expressed interest in [Bioshock.com] in view of its trademark application for BIOSHOCK in connection with hand and skin cleanser [but this was] ultimately abandoned by the company in 2007“.  (You can only imagine what might have happened if Johnson & Johnson, maker of Johnson’s Baby Shampoo, had released a ‘Bioshock skin cleanser…)
  • Finally, Name Administation argued that it “could not be aware of the blog chatter in October 2004 and of the announcement in late 2004 which are alleged by [Take-Two] to be the basis for the timing of the domain name registration. [Name Administration[ specifies that [Take-Two’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 [Take-Two] until 2005“.  In other words, there was no link between Bioshock 1 and Name Administration acquiring Bioshock.com.
The Panel’s findings 
The Panel found that the Bioshock website was “identical” to Take-Two’s Bioshock trademarks.  This satisfied test (i) above.  (I must admit I don’t quite follow the Panel’s very terse logic here, given their findings on bad faith summarised below, but never mind).
But Take-Two fell down on test (iii), i.e. proving that “that the Bioshock website has been registered and is being used in bad faith.”  The Panel held that (a) the fact that the website had come before the trademarks, (b) there was no association of Take-Two with Bioshock until 2005 and (c) in any event Bioshock.com was associated with fields other than video games, meant that “[Take-Two] has failed to prove that [Bioshock.com] was registered and used in bad faith“.
In conclusion, the Panel declined to award ownership of Bioshock.com to Take-Two, meaning presumably it has to make do with http://www.bioshockgame.com/ instead.  A quick look at other Bioshock websites yields a mixed bag: Bioshock2.com is clearly being cyber-squatted, whereas BioshockInfinite.com is being used by Irrational Games so that’s ok.
  • This case illustrates a simple lesson: when you are designing a game or other product, register all the related websites as soon as possible and keep them renewed.  It’s very surprising that Take-Two didn’t do that, but I suppose stranger things have happened.
  • You should seek legal advice on how to protect your IP (particularly trademarks) as soon as possibleIn this case, Take-Two apparently did not apply to register the Bioshock trademarks until quite some time after the game began to be discussed/designed, which helped to cost them in this case.
  • Just because a website has the same name as your game, it doesn’t mean it should or will automatically belong to you.  In this case, Take-Two lost in part because Bioshock.com had scientific as well as gaming uses.

Thanks to Out-Law for the original spot.

Image credit: Take-Two/Fanpop

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