Biotechnology Industry Organization Loses WIPO Legal Rights Objection On New gTLD .Bio

Biotechnology Industry Organization of Washington, lost its Legal Rights Objection filed against Starting Dot applied for new gTLD .bio.

Here are the relevance findings by the one member WIPO panel:

A fundamental issue in this proceeding is the appropriate recognition of the word “bio” by different sectors of the public, founded on differences in the basic meaning of the word, and on differences in uses in different parts of the world.

From the Objector’s perspective, the word “bio” has become recognized as a powerful brand, signifying the services of its industry association and related activities.

From the Respondent’s perspective, the word “bio” itself is not perceived as a trade-mark, but as a word in common currency (in France and Germany in particular) which denotes organic characteristics in food or farming, and a variety of other meanings.

Respondent has gathered evidence showing that the word “bio” is widely used in third party trade-marks and domain names.

It also appears that Objector has tolerated widespread use of the term for many purposes (which even includes some examples of conferences in the field of biology).

No examples of enforcement against bio-formative domain names under the Uniform Domain Name Dispute Resolution Policy were identified. In the Panel’s view, this tends to show co-existence among many users of “bio” related signs, supporting Respondent’s contention that “bio” has many meanings and functions as a multi-facetted generic descriptor.

This factor favours the Respondent.

No specific conduct on the part of Respondent which could constitute evidence of an intention to trade on Objector’s reputation or the core elements of its business has been identified. On the evidence, the Panel therefore finds that Respondent intends to use the <.bio> string for the legitimate purposes described in its application.

In terms of awareness of Objector’s trade-mark rights, it appears likely that Respondent might have had at least some awareness, given the Internet presence of Objector’s business and its international registrations of the BIO marks. However, in this Panel’s view, this factor does not carry significant weight when there is otherwise no evidence that Respondent is attempting to trade on those rights.

In this matter, there has also been no suggestion that Respondent has engaged in a serial pattern of acquiring questionable gTLD strings.

Respondent’s application sets out the most reliable evidence of its plans for the <.bio> string. In this Panel’s view those stated plans indicate a bona fide offering of services related primarily to the operation of a platform for the sale and distribution of properly certified organic wares. At this point, there is no tangible use of the <.bio> gTLD by Respondent which would allow the Panel to truly test how and what it will offer. In the present circumstances, the Panel must deal with the evidence as it exists, and is led to the conclusion that the Respondent’s preparations to use the <.BIO> sign are bona fide.

Finally, the Panel must evaluate Respondent’s plans to determine if the intended services will be provided in a way that does not interfere with the legitimate exercise of Objector’s rights in the BIO mark. In this regard, Objector apprehends that the public will be deceived into thinking that registrants using domain names under the <.bio> gTLD are somehow endorsed, sponsored or associated with the Objector’s business, but has not filed convincing evidence to support this assertion. In any event the Panel finds it is equally plausible that members of the public encountering <.bio> domain names will view the gTLD string as evoking one of the other meanings of the word, such as biography, biology or organic.’

Given the generic nature of the word “bio” and its manifold and diverse meanings not only in English but in other languages, proof of the likelihood of confusion is very difficult to establish. Objector has not satisfied the Panel on this point. If situations arise in the future, where second-level domain name registrants use the <.bio> gTLD string in a manner or combination which infringes Objector’s rights in its field, Objector will certainly be at liberty to enforce those rights as circumstances may demand. Nothing in this decision is intended to limit the Objector’s enforcement rights in such future situations.

The Panel concludes that the Objector has failed to make out its case under the first criteria of Section 3.5.2 of the Guidebook. The evidence does not establish that the Respondent’s use of the <.bio> string will take unfair advantage of the distinctive character or reputation of the Objector’s BIO trade-marks. Objector has not proven, on the balance of probabilities that is unfair for Respondent to adopt as an identifier a descriptive term which is directly related to the organics industry which Respondent’s enterprise intends to serve.

With respect to the second criteria of Section 3.5.2 of the Guidebook, the evidence has failed to show how the Respondent’s use of the <.bio> string will unjustifiably impair the distinctive character or reputation of Objector’s BIO marks. In fact, the evidence tends to show that Objector has chosen as its mark a word that bears multi-facetted meanings in many different languages. As a consequence, there are many other users who have adopted “bio” -formative identifiers. In this context, it is difficult to see how any unjustifiable impairment can occur, so long as Respondent actually holds fast to its planned use of the <.bio> string as described in its application.

With respect to the third criteria of Section 3.5.2 of the Guidebook, the evidence does not establish that the Respondent’s planned use for the applied-for gTLD will otherwise create an impermissible likelihood of confusion with Objector’s BIO mark.

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