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.…
