« September 2007 | Main | November 2007 »
Enquirer.com: "Legal Aid Sues Alleged Copycat"
"The Legal Aid Society filed the suit this week after learning several potential clients mistakenly called Legal Aid Alternative for help, only to be turned away or charged $350 for useless documents."
WSJ.com: "Efforts to Quantify Sales of Pirated Goods Lead to Fuzzy Figures:
""It is virtually impossible to find accurate statistics to substantiate these perceptions" that counterfeiting is on the rise, the ICC author wrote.
The barriers to accurate data on piracy are clear: It's a shadowy business run by criminals."
The Toronto Star: Music Takedown Strikes The Wrong Chord
Copyright expires in Canada 50 years after the author's death. European copyright expires 70 years after the author's death. Accordingly, some works might be public domain in Canada that might still be protected in Europe.
The International Music Score Library Project is a not-for-profit Canadian site hosting works that are public domain in Canada.
IMSLP received this demand letter from the Austrian publisher of composers such as Bartok and Mahler (Bartok died 62 years ago, Mahler died 96 years ago (??)). The letter threatens legal action against the coordinator of IMSLP personally, in Europe, and notes that Canada could enforce such a judgement.
So IMSLP has shuttered its site for now.
Interesting analysis from the designer of the SMASHLAB logo above, discussing the similarities between the two logos, in a designer's terms.
In September, the New York Personal Injury Blog reported on a court decision in which a federal judge held that a 2005 federal law that abolished vicarious liability for car renting and leasing companies. It illustrated the article with the logos of Hertz and Avis.
Eric Turkewitz, author of the blog, now reports that Fred Grumman, Associate General Counsel of Avis, posted the following comment on the blog:
Mr. Turkewitz: This particular piece has just been brought to my attention.
We have the greatest respect for your right to express your opinions on your blog, but that does not include the right to use Avis' trademark as you have done in this particular piece.
Understandably, trademark law is not within your area of expertise. Therefore, we trust that this was done out of ignorance and not based on an intent to misuse our mark to the benefit of your personal injury practice.
We ask that you remove it immediately and refrain from any similar use in the future.
Thank you for you prompt attention to this request.
Fred Grumman
Associate General Counsel
Avis Budget Group, Inc.
Press Release: Nuvision Files Lawsuit Against Panasonic For Trademark Infringement:
NuVision® U.S. Inc., a Scottsdale, Ariz.-based manufacturer of high performance 1080p LED DLP and Deep Black™ LCD HDTV displays, announced today that it has filed a lawsuit in the United States District Court for the District of Arizona against Panasonic Corp. of North America seeking to prevent Panasonic from infringing upon and deliberately copying and using NuVision’s registered “High Definition Living” trademark.
Wired.com: "I Was a Hacker for the MPAA":
The MPAA's use of Anderson is one of a series of controversies the movie industry is confronting in its zero-tolerance war on piracy. MediaDefender, a California company that tracks and disrupts file sharing of movies and music, was reported to Swedish authorities last month by The Pirate Bay, after an internet leak revealed the extent to which MediaDefender pollutes file-sharing services with fake, decoy content. And an executive at a national theater chain successfully pressed New Jersey authorities in August to prosecute a teenager for filming 20 seconds of a movie at a theater to show to her little brother later.
With regard to allegtions that copyright owners 'pollute file-sharing services with fake, decopy content', I have always been concerned to what extent an IP owner can commit what might possibly be tortious behavior towards an entity whose activites may be wholly or partly lawful with regard to that IP owner.
The rifle-scope crosshairs so obvious in the old Blackwater logo have been reduced to a set of horizontal elipses that bracket, but no longer enclose, the paw print, which has also changed to more closely resemble an actual bear-paw imprint. The original Blackwater logo had thick white serif lettering draped over the crosshairs on a menacing black field. The new logo separates the image and the letters, which now appear in buttoned-down sans-serif black and slightly italicized on a white field.
Though the red elipses in the new logo retain the horizontal crosshairs, the overall look is far less “kick your butt” and much more “quarterly report,” some branding experts said. The new logo, which began to appear on some Blackwater material in late July, may also speak volumes about the company’s desire to begin its second decade on a more anodyne note.
NY Times: "Blackwater Softens Its Logo From Macho to Corporate."
I'm going to be in London next week. Who wants to get together?
If warning letters about leaking Wal-Mart's prices have arrived, can Black Friday be far behind? Via BFADS.net.
The Dozier Internet Law Firm came in for recent criticism of copyright mis-use when claiming that posting of its cease and desist letters were barred by copyright. Greg Beck has done some more digging and points us to Dozier's User Agreement. You can't link to it but it's interesting.
In the old pay-per-impression days, John Zuccarini reportedly made $1 million a year registering typo-sites such as bobthebiulder.com and teltubbies.com. I brought a UDRP against him, maybe you did too. It is thought that the Truth in Domains Act was targeted at Zuccarini, who was the first person ever arrested under it, and was imprisoned for 14 months. I can't find any report that anyone else was ever arrested under the Act. Which may speak well of its deterrent effect.
However a prison sentence may not have deterred Zuccarini. According to this article, the FTC alleges that he is still engaging in a 'domain name registration scam' utilizing 'affiliate marketing programs.' No specific names or sites are cited.
I am asked: what is pay-per-impression. This refers to one of the earlier, failed, models of internet advertising, where the website owner was paid for the number of times that its site was viewed. Because the site hosting the ad was paid regardless of whether the person viewing the ad had any interest in the ad or not, the model encouraged misdirected traffic.
The Trademark Blog has been nominated for "Best NY Blawg". Vote early and often here. Quizlaw and Overlawyered are pretty good blogs, btw.
Adrants.com: "Gigantic Goes After MDC's WE ARE GIGANTIC For Trademark Infringement":
"Both GIGANTIC and We Are Gigantic are located in New York. Urban has taken issue with MDC naming its new shop We Are Gigantic and has filed suit against We are Gigantic, L.L.C. and Neil Powell claiming trademark infringement.
Urban tells us, "Neil has offered to peacefully co-exist with our company by offering a plan for differentiating our brands, but so far I have seen nothing that remotely attempts to accomplish this. I am flummoxed as to why this so difficult a document to produce for someone who is supposedly so proficient in branding. Specifically, I find the use of the color red in his logo to be particularly naive, given the use of red in our logotype."
Wired.com: "MoveOn.org Reverses: Allows Critical Ads on Google":
"The left-leaning political advocacy group, MoveOn.org, is backing down in a flap over the use of its name in online advertisements, permitting an influential Republican senator to criticize the organization in a reelection ad on Google's search engine.
"We don't want to support a policy that denies people freedom of expression," says Jennifer Lindenauer, MoveOn.org's communications director."
Let me ask you guys something. As an exercise, I purchased some keywords that have to do with trademark law for ads that promote The Trademark Blog.
I use MyBlogLog, which identifies URLs that readers clicked on to get to my site. One such URL is:
http://pagead2.googlesyndication.com/pagead/ads?client=ca-pub-4171260820145196&dt=1192178573625&lmt=1192178573&prev_fmts
=728x90_as&format=300x250_as&output=html&correlator=1192178572531&channel=5765682001&
url=http://www.wwe.com/divasearch/competitions/res
If you click on that URL you get a page that looks like this, displaying Google ads for watches, wrestling shows and ringtones. If you look at the string, you will see a bit of a url:
http://www.wwe.com/divasearch/competitions/res
which doesn't resolve but
http://www.wwe.com/divasearch/competitions/rescue/
does resolve to the WWE site. You'll notice that the page has no content conceivably related to trademark law (although the word 'trademark' does appear on the bottom of the page, as part of WWE's trademark legend).
However you'll note that there are no keyword ads on the page.
Various 'Google syndication' URLs containing bits of WWE pathnames have been showing up for several weeks now, as well as pathnames that I would characterize as resolving to splogs. None of these sites are trademark related and none seem to be running my ads.
And I'm skeptical that if my ads did appear on the WWE site, that anyone viewing the WWE Divasearch would click through to view The Trademark Blog.
Any theories as to why these strings are showing up in my referrer logs (and yes, I am being charged and no, Google has not provided an explanation to date)?
TechMeme coverage on Google unveiling YouTube antipiracy tool.
Edison-based I-many, Inc. (NASDAQ:IMNY) announced that it has filed a lawsuit against Model N, Inc. of Redwood Shores, Calif., for trademark infringement, dilution, fraudulent business practices and unfair competition.
The Edison provider of contract management software and services alleges that Model N has deliberately used I-many's registered trademarks in a series of online advertisements, where potential customers who click on the trademark "I-many" are diverted to Model N's Web site.
The Tech: "RIAA Sends Thirty Pre-Liitgation Letters Over Alleged Music Piracy":
"Thirty individuals at MIT have been sent pre-litigation settlement letters after allegedly illegally downloading copyrighted music, according to a press release issued by the Recording Industry Association of America last month.
The letters are part of an RIAA strategy announced February 2007 that give students accused of piracy a chance to settle outside of court. The pre-litigation letters offer discounted settlements compared to settlements available after civil court proceedings begin, according to the press release."
DomainNameWire.com: "GoDaddy Increases .Com Prices 12%"
CBS4Denver: "More & More Parents Get Domain Names For Babies":
"If the domain is not already taken, we can pretty much guarantee its going to be taken 15 years from now, when your kid's old enough to use it," he said.
EarthTimes.org: "Russian Standard Vodka and Forbes Win 2007 Domain Name and Internet Traffic Industry Awards":
"This year's winners are Russian Standard Vodka and Steve Forbes, CEO of Forbes, Editor-in-Chief of Forbes Magazine and former presidential candidate (who also delivered the conference's keynote address). The domain name and Internet traffic industry's version of the Academy Awards, We Get It! is bestowed upon the organization or individual(s) that has best demonstrated an understanding of the power of domains and the Internet by attracting visitors, increasing sales and beating competitors in terms of Internet marketing."
Cigar Aficionado: Counterfeit Gallery.
TechCrunch: "And The Walls Came Tumbling Down: Madonna Dumps Record Industry":
"The only real question now is how fast will the music industry model come tumbling down. When Radiohead led the way in offering their music directly to fans many predicted that the move was the beginning of the end; Madonna may well be the tipping point from where we will now see a flood of recording artists dumping record labels and where todays model will shortly become a footnote in Wikipedia."
UPDATE: SIlicon Alley Insider: Radiohead: 1.3 million downloads!
In 1998 I co-wrote with C. Mende an article entitled "Madonna and Audio Streaming" where I'm sure I predicted all of this because I'm so damn prescient, but I'm getting a "page not found error" from ljextra.com, so it's like the article never even existed.
UPDATE: oh, it looks like someone saved a copy of "Madonna and Audio Streaming." Looks like my prediction that 'only time will tell' was wrong.
I can link to LayDdee if it's about copyright infringement.
News.com: Tech Titans Seek Virtual World Interoperability
"Unfortunately for those who like that notion of interoperability, it's not going to be happening just yet. But a group of representatives from some of the biggest and most powerful technology companies on earth--including IBM, Cisco Systems, Intel, Microsoft, Motorola, Google and Sony, as well as from leading virtual-world developers like Second Life publisher Linden Lab, the Multiverse Network, Mindark and others--is hoping to change that in the not too distant future.
The first really public shot in this battle was fired Wednesday when Linden Lab and IBM announced their intention to work toward a day when virtual-world users can port a single virtual identity from one service to another."
Fred at EFF: "Capitol v Thomas: The Key Appeal Issue"
DailyPress.com: Arizona State Sun Devils vs. Salem High Sun Devlis.
Trademark Blog collegiate/high school trademark dispute archives here.
WSJ.com: "What's the Hindi Word for Dot-Com?":
"Long-dominated by English, the language of its founders, the Internet is about to take a big step toward becoming a truly world-wide Web.
Starting on Monday, Web surfers will be able to test Internet addresses in 11 languages that don't use the Roman alphabet -- the 26 letters used in English and most other European languages."
Out-law.com: "Strong whisky laws proposed to stop fake Scotch."
Austn360.com: "The Ethics Of Domain Name Selling"
A few days ago, I got an e-mail from someone who wanted to buy the domain. The man said he and his wife were starting a baby-related business and wanted to use babycation.com. . . .
I asked a friend of mine who works in the Internet business what he’d do. He’s sold several domains over the years, some of them for established sites that had lots of traffic. He suggested I offer it for sale for $1,000, a pretty crazy profit margin, but not unusual for a domain that somebody wants to buy.
I wrote the guy back and told him I would sell him babycation.com for $1,000. I told him in the e-mail that I was open to negotiation and would very likely accept a lower offer. (Check out my hardball tactics.)
He wrote back and he and his wife just had an idea for a small business and that there was no way they could pay that kind of money. He didn’t make a counter-offer. He gave up.
And now I feel terrible. I feel greedy. I feel like I should write the guy back and offer to give him the domain on the cheap and help him and his wife out."
This is an illustration of how the domain name system sometimes function as a tax on small business.
We filed a trademark infringement suit on behalf of First Niagara Insurance Brokers, Inc. today, against First Niagara Financial Group, Inc.
Here is the text of the complaint
You may recall that this dispute was the subject of a Federal Circuit decision regarding use in commerce.
Prof Goldman: "Yet Another NY Court Says Keyword Ads & Metatags Aren't TM Use in Commerce - S&L Vitamins v. Australian Gold."
. . . then you can go to Moniker and download the list of asking prices for an upcoming auction.
The Korean law firm of Kasan sent me its newsletter, summarizing recent trademark decisions, and containing a handy flowchart of the Korean trademark process.
When I begin a matter involving a third-party website, the first step is to do a 'work-up,' that is to say, find out the domain name registrant, hosting service, etc. This article from the Virtual Hosting Blog (really intended for competitive analysis), is a good collection of tools useful in obtaining background information on a website.
BBC: "Kwik-Fit Sued Over Staff Radios":
"A car repair firm has been taken to court accused of infringing musical copyright because its employees listen to radios at work.
The action against the Kwik-Fit Group has been brought by the Performing Rights Society which collects royalties for songwriters and performers."
A decent starting point for looking into the US law on the interperetation of 'in-store' public performance of copyrightable material and the 'home stereo' exception: Congressional Research Service: "Copyright Law's "Small Business Exception": Public Performance Exemptions for Cerrtain Establishments"
Not fearing the wrath of Stewie, my colleagues at Moses & Singer have filed a complaint against Fox and the producers of "The Family Guy", alleging copyright infringement of the song "When You Wish Upon A Star."
Text of the Family Guy complaint here.
Wiki on 'When You Wish Upon A Weinstein."
ArsTechnica: "Song BMG's Chief Anti-Piracy Lawyer: "Copying" Music You Own Is "Stealing":
"Testimony today in Capitol Records, et al v. Jammie Thomas quickly and inadvertently turned to the topic of fair use when Jennifer Pariser, the head of litigation for Sony BMG, was called to the stand to testify. Pariser said that file-sharing is extremely damaging to the music industry and that record labels are particularly affected. In doing so, she advocated a view of copyright that would turn many honest people into thieves."
The Register: "Parents' Fury at Google's Copyright Roadblock":
"Imagine if you walked into Scotland Yard to report a crime involving children, only to be given a telling off, before you'd opened your mouth, about the dire penalties for wasting police time. And that your complaints would be forwarded to a watchdog - and that you'd better come back with a lawyer.
That's how a group of parents feel after seeing photographs of their kids defaced on Orkut. Members of Google's social network created "mash-ups" of photographs originally posted to Flickr - adding text, some of which contained sexual innuendo, for children as young as five."
STL: Basketball manufacturer wins $8 million in false advertising damages against competitor who claimed that its basketball was innovative.
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2007-1193
1. The Parties
The Complainant is Facebook Inc. of Palo Alto, California, the United States of America, represented by Heller Ehrman LLP, the United States of America.
The Respondent is Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 15, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 16, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 15, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2007. In accordance with Paragraph 5(a) of the Rules, the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph 7 of the Rules.
4. Factual Background
The Complainant in this administrative proceeding is Facebook, Inc., a Delaware corporation having its principal place of business in Palo Alto, California, the United States of America. The Complainant was founded in 2004 and is a recognized leader in providing online social networking services and related products and services. Currently, the Complainant has more than 31 million active users of its online services, and its website at “www.facebook.com” is the sixth-most trafficked website in the United States of America. The Complainant is the owner of numerous FACEBOOK trademarks that are registered in many countries worldwide, inter alia, a word mark FACEBOOK (Reg. No. 3122052) filed on February 24, 2005 with the United States Patent and Trademark Office and stated to have been first used in commerce at least as early as February 4, 2004 (the “FACEBOOK Marks”), and a European Community Trademark for FACEBOOK (Reg. No. 2483857) with a registration date of June 13, 2003 (to which the Complainant states it is the successor-in-interest). The FACEBOOK Marks mostly designate the provision of online chat rooms for transmission of messages as well as an online directory information service, both concerning collegiate life, classifieds, virtual community and social networking.
The Respondent in this administrative proceeding is Privacy Ltd. Disclosed Agent for YOLAPT. The disputed domain name
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy is present in this case:
(i) The domain name is identical or confusingly similar to the Complainant’s FACEBOOK Marks.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered the mark FACEBOOK anywhere in the world, is not a licensee of the Complainant, does not produce or market any of its own goods or services under the FACEBOOK name or mark but 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. Furthermore, the Respondent does not use the domain name in connection with a bona fide offering of goods and services and is not commonly known by the domain name. Finally, the Respondent is not deemed to make any legitimate noncommercial or fair use of the domain name as it merely diverts customers to other commercial websites.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the website at the disputed domain name is used in order to free ride on the Complainant’s reputation and customer goodwill. The Respondent is intentionally diverting Internet users and customers to a website for commercial and financial gain. The Respondent had actual notice of the FACEBOOK Marks and the Complainant as the source of high quality products and services. Since the Respondent appears not to use FACEBOOK in association with any of its own products or services and does not identify its own company by such name, it would have no reason to register and use the disputed domain name unless it was aware of the goodwill associated with FACEBOOK and was attempting to usurp this goodwill. In addition, the Respondent had constructive notice of the Complainant’s prior use of the FACEBOOK Marks that had been used at least for eight months already when the Respondent registered the disputed domain name. The Respondent either knew or should have known of the Complainant’s prominent use of FACEBOOK. Finally, the Complainant contends that the Respondent’s bad faith is evidenced by the lack of any reply to the Complainant’s attempts to contact it by email and by ordinary mail.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name was registered on October 3, 2004, i.e. quite possibly before the Complainant acquired any trademark rights in the FACEBOOK Marks (it is unclear from the provided material when exactly the Complainant first acquired rights in the European Community Trademark for FACEBOOK, which as noted previously has a registration date of June 13, 2003). However, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. See AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The fact that the disputed domain name predates the Complainant’s trademark registration is only relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii) of the Policy, which is considered below.
The disputed domain name fully incorporates the FACEBOOK Marks and can only be distinguished from them by the hyphen between the words “face” and “book”. Hyphens are generally without legal significance when comparing domain names to trademarks. See X-Copper Legal Services Inc. v. Majid Hashemi, WIPO Case No. 2007-0251; VeriSign Inc. v. Bin g Glu / G Design, WIPO Case No. D2007-0421.
Finally, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
The domain name is therefore almost identical and in any case confusingly similar to a trademark in which the Complainant has rights, and the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent in this case did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under Paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of Paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The two parts of the third requirement of the Policy are generally regarded cumulative conditions: i.e. the Complainant must show that the domain name was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758.
As to bad faith registration, on balance, the Panel is convinced that the domain name was registered by the Respondent in bad faith for the following reasons, 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:
Firstly, it is important that the name FACEBOOK (consisting of “face” and “book”) is made up of two common terms in an imaginative manner and can generally not be found in dictionaries. It must therefore be considered as inherently distinctive (this is confirmed by the numerous trademark registrations in English-speaking countries worldwide which do not rely on secondary meaning). The Respondent therefore did not register just any generic domain name.
Secondly, taking into account all circumstances of this case, it is difficult to imagine that – eight months after the Complainant’s services were first offered online – the registration of an almost identical domain name that is not generic by a third party is a mere coincidence. The Complainant’s services, by their very nature, became known to the public through the Internet and thus worldwide. Domicile is irrelevant in this regard.
Thirdly, the Respondent has never been offering any products or services of its own or been known under the domain name. It could have given a different meaning to the combination of the words “face” and “book” by using the disputed domain name but preferred to enter into direct competition with the Complainant.
Fourthly, the Respondent is using a privacy shield, and apparently wishes not to be identified. The Panel has considered the possibility that such behavior enables the Respondent to conceal facts that might otherwise be considered as evidence against it.
Finally, the Respondent has not made any effort to defend itself – neither when first contacted by the Complainant nor in the course of these administrative proceedings. The Panel is not of the opinion that the absence of a response in UDRP proceedings is to be considered automatically as an indication of bad faith. Still, cases involving generic domain names must be distinguished from cases concerning inherently distinctive domain names, in particular those where the domain name includes a famous trademark as in this case.
Having regard to these facts, 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”. Actual knowledge of the FACEBOOK Marks is also required and more difficult to establish. Although the Panel does not exclude the possibility that the Respondent may have been aware, at the time of registering the disputed domain, of the European Community Trademark for FACEBOOK, the evidence is not decisive, and the point at which the Complainant itself acquired that mark remains unclear. As a general rule, a domain name is not registered in bad faith if it was registered before the trademark. Still, an exception must be made to this rule where the respondent registered the domain name with speculative intent in full knowledge of the likely use of the trademark by the complainant, and, more particularly, where the respondent hopes to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. See e.g., inter alia, ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669; Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. Considering the circumstances of the present case, the Panel is of the opinion that the Respondent in all likelihood had such speculative intent and thus that the registration of the disputed domain name occurred in bad faith. As a result, the Panel need not make a finding on whether the concept of constructive notice exists under the Policy (most panels have declined this unless in the presence of very special circumstances).
As to bad faith use, by fully incorporating the FACEBOOK Marks with only a minor variation into the disputed domain name and by using the website under such domain name to provide advertisements and links to other commercial websites that offer services and products in direct competition with the Complainant’s products and services, 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. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under Paragraph 4(b)(iv) of the Policy. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references.
Therefore the Respondent has also been using the disputed domain name in bad faith.
As a result, the Complainant has established registration and use in bad faith under Paragraph 4(a)(iii) of the Policy as well.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name
Brigitte Joppich
Sole Panelist
Dated: September 23, 2007
