It is fundamental that a respondent’s intent at the time it registers a disputed domain name to take advantage of the complainant’s reputation in the marketplace is an essential element of bad faith. Intent is linked to knowledge of the complainant or its trademark, but proving intent through knowledge in the face of a respondent’s denial is a heavy burden. It is lighter for arbitrary and heavier for descriptive trademarks. Evidence is particularly hard to marshal in those instances where the domain name is composed of generic elements that have currency in several lines of commerce. This is the story in Take-Two Interactive Software Inc. v. Name Administration Inc., D2010-0845 (WIPO August 6, 2010). The Complainant holds a trademark registration for BIOSHOCK, but the disputed domain name <bioshock.com> was registered prior to the registration of the trademark.
The Complainant in Take-Two also had other problems of proof, some of its own making. Where knowledge of the complainant or its trademark is denied, concrete evidence to the contrary is generally unavailable. At one end of the spectrum knowledge means actual intelligence of the complainant and its trademark; at the other end, it means presumed or “more likely than not” knowledge inferred from evidence submitted in support of bad faith. The Complainant in Take-Two alleged that the Respondent “had been made aware of the Complainant’s BioShock game from the statement made by the game developer” prior to the registration of the domain name. Awareness can be inferred, but even if in this case it were
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.
The burden of proof cannot be satisfied by asserting a possibility of knowledge without intention to take advantage of the complainant’s reputation or the penetration of its trademark.
There were two further disqualifications in Take-Two. First, Complainant filed an “intent to use” trademark application and it subsequently represented that its first use in commerce post-dated the registration of the domain name by almost two years. An admission against interest may be excusable on concrete proof of secondary meaning but even if that were likely in Take-Two “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,” citing Promatic International Limited v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006).
The second disqualification lies in combining dictionary words. The result of joining “bio” and “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.).” Even if these disqualifications were not present, the “content published on the web page linked to the Domain Name [were] links related to scientific content.” This is rather evidence of good faith than targeting.