Facebook wins domain dispute

[Sameh]

Facebook has won a domain dispute against Privacy Ltd. Disclosed Agent for YOLAPT, a business from the Isle of Man. The disputed domain name <face-book.com>. The domain was registered in October 2004 and “provides, inter alia, advertising for and links to other commercial websites offering social networking and information services.”

Facebook’s complaint was based on three points:

• “the domain name is identical or confusingly similar to the Complainant’s FACEBOOK Marks”

• “the Respondent has no rights or legitimate interests in respect of the domain name” with no registered trade marks, no goods or services provided and “simply uses the website at “www.face-book.com” as a portal site, listing advertisements and links to other commercial websites that offer goods and services highly similar to those of the Complainant”

• “the domain name was registered and is being used in bad faith” and intended to free ride on Facebook’s name.
  The respondent didn’t reply.

WIPO found “the domain name is identical or confusingly similar to the Complainant’s trademark” and that the domain name was registered in bad faith, “although the case established by the Complainant is towards the weaker end of the spectrum, noting in particular the absence of provided evidence from which the Panel may assess the extent (or otherwise) of the fame of the name or mark FACEBOOK at the moment of the registration of the disputed domain name.”

In conclusion, “the Panel is convinced on balance that the disputed domain name was registered by the Respondent with actual knowledge of the Complainant’s website at ‘www.facebook.com’ and “the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website.”

Source : DomainNews

 

[Dave_Z]

No brainer really.

Folks, this is an exception to the commonly-held belief that any domain name
that's registered before a trademark has been established is safe. Read this
decision carefully and learn from it.

While some of you no doubt don't agree with it, it's not gonna shield you from
something like this happening to you if similar circumstances occur.

 

[liquidcherry]

Well, my 2 cents are......don't park it,devel is the key....or do some content on it, not related to the original.......even when the original facebook came later....IMO, nothing wrong with that decision..and i agree the guy(s) who registered face-book.com had maybe some "insides" or similar....but, hey what do i know about legal crapp???

btw....it is still parked????...wonder wonder wonder.....

Cheers,

Frank

 

[Domagon]

Note the key phrase in the decision text posted above ... "The respondent didn’t reply."

Many adverse UDRP decisions are mostly the result of the respondent simply not responding adequately, if at all, to the complaint.

Ron

 

[neroux]

Well, facebook.com was registered in 1997 but the current service only went online in February 2004. The domain in question was registered eight months later (October 2004), so one could assume "bad faith", however it would be interested whether the service was already popular enough in these eight months to justify a "free ride".

But I'd assume Domagon's suggestion that the non-response played a big part in the decision is most probably right.

 

[labrocca]

I wonder how much the guy earned in his 3 years of ownership?

Anyone want to guess...I think $x,xxx.

 

[hugegrowth]

'facebook' is a generic word that has been around long before the Facebook site, so I think a good, experienced response could have won this dispute. There are all sorts of domains with 'facebook' in them, some are actual social sites too. If you sell bananas at banana.com, can you go after the guy selling bananas at bananas.com?

 

[Sameh]

'facebook' is a generic word that has been around long before the Facebook site, so I think a good, experienced response could have won this dispute. There are all sorts of domains with 'facebook' in them, some are actual social sites too. If you sell bananas at banana.com, can you go after the guy selling bananas at bananas.com?

Face-Book.com registered : 2004-10-03
FaceBook.com registered : 1997-03-29

 

[neroux]

Face-Book.com registered : 2004-10-03
FaceBook.com registered : 1997-03-29

Correct, but obviously owned/used by/for someone/something else for seven years.

 

[Dave_Z]

'facebook' is a generic word

For the following?

providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking.

providing an online directory information service featuring information regarding, and in the nature of, collegiate life, classifieds, virtual community and social networking.

WayBack says face-book changed contents in 2006 to what it is today.

 

[DNQuest.com]

'facebook' is a generic word that has been around long before the Facebook site, so I think a good, experienced response could have won this dispute. There are all sorts of domains with 'facebook' in them, some are actual social sites too. If you sell bananas at banana.com, can you go after the guy selling bananas at bananas.com?

Windows, Champion, Cheer, Apple, Apple (yes twice), Delta... you think these are generic too? Maybe some TM reading will help.

 

[neroux]

Windows, Champion, Cheer, Apple, Apple (yes twice), Delta... you think these are generic too? Maybe some TM reading will help.

True, but they are all used in an abstract sense while facebook.com uses a name which actually describes itself (it would be similar to someone using operatingsystem.com for an operating system).

 

[Dave_Z]

while facebook.com uses a name which actually describes itself

As "an online directory information service featuring information regarding, and
in the nature of, collegiate life, classifieds, virtual community and social
networking", which happens to be described as such in their TM registration?

 

[IAmAllanShore]

I'm still not a fan of the decision - it's hard to set this one in good context with decisions like this one showing that "facebook" is easily protected by other non-tm holders (Unless you think that "SU" is sufficient as a source identifier.).
That being said, meh - I can't get worked up about this one for some reason
-Allan :gl:

 

[loko123]

umm, i believe this dispute was justified, and i agree partially with the result.