Yes, if you use it as a trademark, in addition to using it as a domain name.
Trademark use: We are EXAMPLE.COM
Trademark use: We are EXAMPLE
Not trademark use: Visit us at EXAMPLE.COM
TTABlog on case about someone who didn't read this post.
Dear AOL:
I'm the member of the family that usually buy the tickets online using 777film.com. Today my wife attempted to. She typed in 777films.com by mistake, and assumed she was on your site. Apparently you don't own 777films.com. She was actually confused. And a little annoyed at you.
Sincerely,
A Customer
. . . and there is something in particular that you would like to see discussed, please email me at marty at symbol schwimmerlegal dot com.
You can also attend by conference call and we mail you your choice of roast beef wrap or grilled vegetable medley.
Details on the domain name roundtable to be held at our NY offices here.
ArsTechnica: "Keeping Networok Solutions from Cashing In On Your Subdomains":
Earlier this week, a report at TechCrunch pointed out that a number of subdomains at GotGame.com pointed to generic Network Solutions pages with spammy text links. A number of observers across the Internet found other sites that were hosted through Network Solutions and experiencing the same issue. It appeared as if Network Solutions was taking advantage of its customers by hijacking subdomains and profiting from them without the domain owners' permission.Well, it turns out that that's not entirely true.
WIPO: DNS Developments Feed Growing Cybersquatting Concerns:
Last year, a record 2,156 complaints alleging cybersquatting - or the abusive registration of trademarks on the Internet - were filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (Center), representing an 18% increase over 2006 and a 48% increase over 2005 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes.
Example of cybersquatting complaint under in rem provision of ACPA arguing that Verisign is located in Massachusetts because it's registered to do business in Massachusetts.
A motion to dismiss has been decided in the Vulcan Golf class action against various PPC companies including Google. RICO charges and some torts out - cybersquattign stays in.
Cabel.name: Japan" "URL's Are Totally Out", wherein the author notes a trend in Japanese advertising to encourage viewers to type in a certain term into a search box instead of navigating via a URL.
It makes sense, right? All the good domain names are gone. Getting people to a specific page in a big site is difficult (who's going to write down anything after the first slash?). And, most tellingly, I see increasingly more users already inadvertently put complete domain names like "gmail" and "netflix" into the Search box of their browsers out of habit — and it doesn't even register that Google pops up and they have to click to get to their destination.
The author concludes that in the future, the url window and embedded search window will trade sizes to look like this:
I think that this if this is in fact the trend in Japan then it is very important for trademark owners. When I ponder things like the PPC industry, and domain tasting, and front-running, and a seemingly endless parade of sunrise periods, and an endless stream of emails from the Intellectual Property Consitutency of ICANNs seeking written comments about the latest outrage, I am left with the conclusion:
The domain name system is damage and the trademark community should route around it.
I think that educating the audience to use search engine terms rather than URLs is a step in that direction.
Thanks to Cabel for spotting this.
News.com: Porn-friendly .xxx domain backer loses suit against federal agencies
The company behind the proposed .xxx top-level domain, which was rejected after the Bush administration intervened, has been trying to dig up embarrassing government documents through a federal lawsuit.Make that "was trying." A federal judge on March 12 granted summary judgment to the Bush administration in the Freedom of Information Act lawsuit brought by the ICM Registry.
I will be hosting an INTA Roundtable on INTERNET DOMAIN NAMES: A TRADEMARK PRACTITIONER'S POINT OF VIEW at the Trademark Blog World Headquarters, also known as the offices of Moses & Singer, in the Chrysler Buidling in midtown Manhattan, April 14. Register through INTA. Attendance is limited. Discussion outline here.
The Legal Satyricon: "Is GoDaddy A Mass Cybersquatter?":
These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like “find something interesting” or “helping you find what you need.”Far from “helping you find what you need,” these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is “The Drudge Report.” Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up - certainly no where near the Drudge Report. You can do this all day long — and you’ll find these crappy and annoying pages everywhere. I suspect that they outnumber “legitimate” websites at this point.
I suppose I'm giving away my reaction to the decision. Murdoch announced the Fox Business Channel on February 8, 2007. Respondent registered FOXBUSINESSNETWORK.COM that same day, but alleged prior use dating back to 2002. Decide for yourself (by the way, this is an 'embedded' document using the Scribd iPaper service. The button in the upper right corner allows you to view the document in full screen mode):
CircleID: "The Liabilities for the Corporations and/or their Lawyers":
This post is based on the scenario that a trademark.tld domain name is registered with a UK ICANN accredited registrar, (they have an exclusive UK jurisdiction clause in their contracts), the trademark.tld criticism website located at that domain name is strictly non-commercial, the servers are located in the UK, and the registrant is a British citizen.In the above circumstances, the corporations and/or their lawyers are taking a big risk when they use the UDRP in order to silence criticism at trademark.tld
Russia Profile: "Trademark Squatters Profit at the Expense of Multinationals":
Starbucks is one of hundreds of foreign brands that have become targets of Russian trademark squatters. The American company first registered its trademark in the country in 1997, but did not open any stores here because of the economic crisis in 1998. The trademark was not used for three years after the registration and therefore became void. It was at this point that Sergei Zuykov, Russia’s most famous trademark squatter, stepped in and registered it in his name. In 2005, Zuykov suggested that Starbucks pay $600,000 for the right to use their name in Russia.The dispute was on the agenda at WTO talks between Russia and the United States in fall 2005. According to unofficial reports, Arkady Volsky, the head of the Russian Union of Industrialists and Entrepreneurs, met Zuykov to ask him to back down. “I didn’t meet Volsky,” Zuykov said. “I met his advisor, who said: ‘If you’re ready to give up all the claims, then you can go and shake Volsky’s hand.’ I didn’t want to shake hands with Volsky.”
CNN.com: Domain Name Game Still Going Strong.:
Demand Media, based in Santa Monica, Calif., received $100 million in a funding round last July, led by Goldman Sachs (NYSE:GS) GS. Demand Media has raised $320 million since its launch two years ago.Another big player, Oversee.net, last month said it received $150 million in a funding round from private equity firm Oak Hill Capital Partners. Oversee.net owns 700,000 domain names and helps service and maintain another 2.4 million domains owned by others.
Oversee also has a $100 million credit line from Bank of America . . .
Interesting Nominet decision finding for MySpace, even though registrant had apparently registered the name before MySpace launched.
MySpace, Inc. v Total Web Solutions Ltd.. Nominet DRS 04962 (Notice of Intent to Appeal Received).
Out-Law commentary here.
NY Times: "Coins in the New Realm":
"Mr. Buck and other domainers profit when inexperienced Internet users type those names into their Web browsers, and once on the site click on related advertisements. In the longer term, they hope to resell their domain names for large profits to companies that want to build real businesses with those Web addresses.. . . Domain-name trading takes little of the actual effort needed to build a business on the Web, instead relying on clicks from people who simply guess at a site’s name or are too lazy to use a search engine. In its early years, the field was dominated by offshore players and secretive, if not illegal, tactics.
But increasingly, there is serious money at stake. Last year, 106 domain names drew more than $100,000 each, and one, porn.com, went for nearly $9.5 million. In 2006, only 70 domain names sold for more than six figures each. Millions of generic domain names, pointing to sites with little more than automated Google or Yahoo text ads, brought in untold millions of dollars."
www.nytmes.com leads to newspaperarticlesfree.com.
ICANN: ICANN Board Recommends Action on Domain Tasting:
The Internet Corporation for Assigned Names and Numbers is looking to effectively end domain tasting with a proposal to start charging the annual ICANN fee on registrar domain registrations.Domain tasting is the use of the Add Grace Period to test the profitability of a domain name registration. The AGP is a five-day period following the initial registration of a domain name when the registration may be deleted and a credit can be issued to a registrar.
"Domain tasting has been an issue for the Internet community and ICANN is offering this proposal as a way to stop tasting," said Dr Paul Twomey, ICANN’s President and CEO. "Charging the ICANN fee as soon as a domain name is registered would close the loophole used by tasters to test a domain name’s profitability for free."
Information Week: Google Takes Aim At Domain Tasting Profiteers:
Google is planning to introduce a system to detect a form of domain registration abuse known as domain kiting. In so doing, the company stands to lose millions in advertising revenue, though it may gain far more in user trust and goodwill.Registrants of Internet domains generally have a five-day grace period between the time a domain is registered and the time payment for the domain is due. This five-day period is used by domain profiteers for domain tasting -- testing the ad revenue generated at a given domain and then returning unprofitable domains -- and for domain kiting -- deleting newly registered domains within the grace period then immediately re-registering them to reset the grace period and postpone payment.
ICANN: GNSO Initial Report on Domain Tasting
Conclusion: Domain Tasting is of 'significant concern' and therefore there should be a 'policy development process' to 'explore policy changes.'
MSNBC.COM: "Internet Agency To Battle Domain Name 'Tasting'"
In a draft report issued this week, the Internet Corporation for Assigned Names and Numbers outlined key issues for a committee to study further and craft recommendations. A final report is due after a public comment period closes Jan. 28.Don't expect any immediate relief. The committee, the Generic Names Supporting Organization, could take months or years to review the matter, after which ICANN's board still would have to vote on any changes.
The operators of the ".org" suffix already won approval to charge companies that make too many returns. The number of deletions dropped to 152,700 in June, compared with 2.4 million in May, after the new fee took effect.
Folks are afraid of domain name front-running, that is to say that they fear that someone will intercept a whois look-up and register the name ahead of then. In fact, in the pre-ICANN days when the old NetSol wouldn't require payment up front, it made sense to register a name rather than look it up (and now in the era of domain name tasting the same logic applies).
So today we learn the following. If you go to (the new) NSI's whois, and type in any available string, for the following four days that string will show up as a name registered to "This name available through NSI." You (or, as far as I can tell) anyone else over the next four days) can only buy that name through NSI (at it's regular retail price). During those four days, the name, say, NSIISTEALINGMYNAME.COM will look like this.
So, to the best of my understanding, if you were to search for the name WHICH-REGISTRAR-WILL-SUE-NSI-FIRST.COM now, and it was available, and you closed your browser terminating your search, for the next four days that string will show up as UNAVAILABLE in every other registrar's whois, and as available in NSI's whois, and anyone can register the name through NSI for the next four days.
NSI's spokesperson has responded as follows:
“I’d like to clarify what we are doing. In response to customer concerns about Domain Name Front Running (domains being registered by someone else just after they have conducted a domain name search), we have implemented a security measure to protect our customers. The measure will kick in when a customer searches for an available domain name at our website, but decides not to purchase the name immediately after conducting the search.After the search ends, we will put the domain name on reserve. During this reservation period, the name is not active and we do not monetize the traffic on these domains. If a customer searches for the domain again during the next 4 days at networksolutions.com, the domain will be available to register. If the domain name is not purchased within 4 days, it will be released back to the registry and will be generally available for registration.
This protection measure provides our customers the opportunity to register domains they have previously searched without the fear that the name will be already taken through Front Running.
You are correct that we are trying to take an arrow out of the quiver of the tasters. As you know, domain tasters are the largest Front Runners. Due to no fault of registrars, Front Runners purchase search data from Internet Service Providers and/or registries and then taste those names. Some folks may not agree with our approach, but we are trying to prevent this malicious activity from impacting our customers.”
Well, I suppose that there is a certain of subset of people who wil search on NSI, not immediately register, and want to register over the subsequent four days. If NSI's program does in fact protect such people from front-running, then NSI is acknowledging that the connection between the whois searcher and NSI's server is not secure. It's worth exploring why.
BUT LET'S NOT FORGET THIS SCENARIO:
Your namesearcher is searching EXAMPLE1 through EXAMPLE50 for you. Your name searcher doesn't have a credit card and you're not authorized to spend the money on ten names so you can't snap up all ten. Someone hear's a rumor that you're considering EXAMPLE4 as a name. They check the name and now they know that someone has searched the name on whois within the past 4 days.
So everyone is forced to be a name taster now.
BusinessWire: "Moniker Joins Oversee.net"
About Oversee.netFounded in 2000, Oversee.net is a technology-driven online marketing solutions company with two primary divisions--Oversee Domain Services and Oversee Marketing Services. Headquartered in Los Angeles with offices in Portland, Oregon and San Mateo, California, the Company has over 200 employees. Some of Oversee’s key brands include SnapNames®, the operator of the largest available source of expired and deleting domain names; DomainSponsor™, a global leader in domain monetization, and Low.com™, a top consumer financial services portal. Oversee has been growing profitably since inception.
Oversee was named to the Inc. 500 and ranked third in the Deloitte Technology Fast 50 of Los Angeles and 18th in the nation. Oversee was also named “Internet and New Media Company of the Year” by the Technology Council of Southern California and its CEO and Co-Founder, Lawrence Ng, was named a winner of the 2007 Ernst & Young Entrepreneur of the Year award for the Greater Los Angeles program in the technology category. To learn more, please visit http://www.oversee.net.
About Moniker.com
Moniker, with headquarters in Pompano Beach, Florida, is the leading provider of Domain Asset Management™, a complete set of business services that provide companies a single-point-of-access to help manage and maximize the value of their domains. With more than a decade of experience, Moniker is a top 10 domain registrar, holds the industry’s highest customer retention rate and pioneered the industry’s first domain appraisal formula. It is considered the industry’s premier marketplace to buy and sell premium domain names. For more information, visit http://www.moniker.com.
Scotsman.com: "US Mogul Foils Web Name Hijack Scheme":
An American multi-millionaire has come to the rescue of a Leith businessman whose website was hijacked by a hacker.Internet mogul Bob Parsons owns the domain registry firm GoDaddy.com which web designer David Airey used to log his own site.
Hoerbiger sells automation and compressor equipment under the name HOERBIGER. Texas International Property Associates registered the name HORBIGER.COM and provides links relating to automation and compressor equipment. Hoerbiger brought a UDRP and in October, the panelist found for it, ordering transfer of the name. TIPA brought a suit in Texas state court requesting a stay of the transfer. The suit has now been removed to federal court (TIPA v. Hoerbiger Holdings, 3:07-cv-02099 ND Texas).
Dallas Morning News story on TIPA here.
NY Times: "The Lotts, Lobbying and Domain Name Defense":
"A report confirming an online union between Senator Trent Lott and former Senator John Breaux — breauxlott.com — raised questions because Mr. Lott is not allowed to join the lobbyist ranks for some time and has played down the prospect."
Funeral home alleges that rival funeral home registered a domain name reflecting its name. Alpson, Inc. dba Porto Funeral Home v. East Haven Memorial Funeral Home, Inc. and James Brennan, (D Conn Dec 8 2007).
Tombstone generator here.
Interesting idea. Out-Law.com: "Business Should Fund Domain Name Police":
A technology law expert has called on the business world to set up a policing outfit to tackle cybersquatters. The call came as Dell raised the stakes in the fight against domain hoarders, demanding compensation of $1 million per name in a lawsuit.
Dell is claiming that a series of alleged cybersquatting instances constitute counterfeiting of its trade marks and is seeking damages of $1 million per domain name infringed.
John Mackenzie, an intellectual property and technology law expert at Pinsent Masons, the law firm behind OUT-LAW.COM, said that businesses should band together to tackle the multi-million dollar cybersquatting industry pro-actively.
Good short (5 page) paper by UK domain name registry Nominet on domain name monetization.
Discourse.net: "Can Typosquatting Be Counterfeiting?"
"The story there is about Dell bringing a very large and organized case against a bunch of domain tasters (people who register domain names for a very brief period then drop them, so they don’t have to pay for them) who were apparently typosquatting on a grand scale.
What makes the story interesting is that Dell’s lawyers threw in a counterfeiting claim into their complaint. It’s artfully worded, but the essence of it is that the counterfeits are the domain names, and/or the act of putting up web sites at the domain names that have popups or pop-under ads."
The anti-virus people, McAfee, have released a report on typo-squatting. Among their conclusions is that a consumer who mis-spells a popular web site URL has a 1 in 14 chance of landing on a typo-squatter site.
Plaintiff owns BIOCALTH trademark. Domains by Proxy customer had been using BIOLAWSUIT.COM for a Chinese language site that seemed to refer to a lawsuit relating to BIOCALTH (archive.org page here), the pages of which allegedly reproduced the BIOCALTH logo (the page is down as of this writing). Domains By Proxy doesn't give up name, Plaintiff sues Domains By Proxy and registrar Go Daddy.
Giantceutical v. Domains By Proxy, CV 07-07309 (JTL) (CD Cal Nov 3 2007)
After domain name registrar refused to disclose the identity of the registrant of InstitutionalHartfordLife.com, Hartford Life sued Moniker in the Southern District last week. Via Justia.com docket search. Hartford Fire Insurance, et. al. v. Moniker Online Services, LLC and John Does 1-10, 0 Civ 9729 (S.D.N.Y. Nov. 2 2007).
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.
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."
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."
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.
. . . then you can go to Moniker and download the list of asking prices for an upcoming auction.
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.
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
Wired: "Dot-Name Becomes Cybercrime Haven"
"The domain name system has grown bigger than it was ever planned to be, is doing more than it was ever intended to do and does it proudly," Evron said. "But the governance around it has become profit-based, and we have no fallback system to handle criminal organizations and countries that abuse domain names."
Registrant:
Alexander Shkirenko
489 Lindbergh Place NE
Suite 938
Atlanta, Georgia 30324-3357
United States
Registered through: GoDaddy.com, Inc. (http://www.godaddy.com)
Domain Name: DONTTAZEMEBRO.COM
Created on: 18-Sep-07
Expires on: 18-Sep-08
Last Updated on: 18-Sep-07
"County Supervisor Dennis Hansberger has sued to stop a Muscoy man from criticizing him through a Web site using the supervisor's name.
Hansberger, who is running for re-election, won a temporary restraining order stopping William Fanning from profiting, promoting or selling the name, said Hansberger's attorney, Tim Prince.
A preliminary hearing is set for Sept. 26. Hansberger seeks to win the rights to the domain name.
"The public's access to information about Mr. Hansberger is being limited by these sites," Prince said."
Fanning, 37, owns several cyberdomains that use Hansberger's name, such as www.dennishansberger.com. The Web sites contain critical remarks about the 3rd District supervisor, along with links to newspaper stories about him.
BBC article on the .TK country code top level domain (from the island of Tokelau).
As of now, BBC.TK is still available for registration.
More from the Register here.
Wired: "Fraudster Who Impersonated a Lawyer to Steal Domain Names Pleads Guilty to Wire Fraud"
"A Nevada man pleaded guilty Thursday to his plotting to steal URLs from their legitimate owners by impersonating a California intellectual property lawyer and send threatening letters to domain name owners in hopes of convincing them to turn over the domains to him.
Las Vegas resident David Scali registered the email address trademarkinfringement@netzero.net in 2006 and then, pretending to be a real Califonia lawyer (whose intials are K.Y.C.), threatened domain name owners with $100,000 trademark infringement suits, unless they transferred the domains within 48 hours."
Practice pointer: Very often a domain name registrant will justify a refusal to acknowledge a demand letter by pointing out (correctly) that there is (some amount of) fraud regarding domain names. When sending a demand letter, do not rely on email alone, and provide verifiable contact info. If acting on behalf of a client, when communicating with the registrant by email, visibly cc the client by email (with the client's permission, after discussing with the client the pros and cons of so doing).
Practica eCommerce: "Transferring a Domain Name: Process Varies Depending On the Registrars"
This Is South Devon.co.uk: "Paignton-based International Seed Suppliers Suttons Have Won A Battle"
We have reported previously on what I would refer to as the mess regarding the use of politician's names in domain names. A bad actor can benefit by aprropriating a politician's name, either by diverting traffic through initial interest confusion, or by simply foreclosing the targeted politician from obtaining desirable names. However a politician tends not to have the rights and remedies accorded to a trademark, and thus cannot use the UDRP and ACPA (with exceptions). Complicating the analysis is the First Amendment issue relating to the use of, for example, JANEDOE.COM to provide critical speech about JANE DOE. Alas, the public doesn't benefit from the status quo (such as the behavior illustrated here).
What is to be done?
Out-law.com: "Businessman loses battle for gripe site domain name.":
"The figure behind controversial business schemes has failed in his bid to gain control of the .com internet address consisting of his name. A site that criticises his activities has been allowed to keep the name."
The post doesn't specify but I assume that the domain name in question is stephencleeve.com.
This CircleID post on a TRO entered against Dauben dba Texas International Property Associates, the registrant of the name MYLENNAR.COM, obtained by Lennar, spawned interesting comments. Registrant put up what seems to be a typical HitFarm page o'links. What is not fully explored in the article or thread is why would plaintiff go for a TRO, as opposed to, for example, a UDRP.
From its website:
Purpose
The Coalition Against Domain Name Abuse (CADNA) is a registered 501(c)(6) non-profit organization. Its objective is to facilitate dialogue, affect change, and spur action on the part of policymakers to address the gaps in both the law and ICANN policies that enable massive domain name abuse and consumer frauds. In doing so, CADNA seeks to decrease occurrences of cybersquatting in all of its forms by requesting anti-cybersquatting legislation updates and ICANN policy reforms. With pro-abuse groups already organized in Washington and the recent election of new leadership in both houses of Congress, the time to act is now.
Approach
CADNA will work to educate the public, lobby the relevant agencies of jurisdiction in the United States government, and actively communicate with members of Congress. Through these activities CADNA aims to effectively exert pressure on ICANN, propose draft legislation to increase the statutory damages set forth in the Anti-Cybersquatting Consumer Protection Act (ACPA) to take decisive action on abuses by domain name registrars and registrants, and work with the World Intellectual Property Organization (WIPO) to introduce an international anti-cybersquatting treaty."
Domain Name Wire: "Top Domain Name News Stories of July 2007"
CircleID: "EU NameSpace is Dead?"
Prof Goldman: "Google Sued in Domainer Lawsuit -- Vulcan Golf v. Google:
"Domainer litigation is heating up, and this lawsuit may be the most ambitious anti-domainer lawsuit to date. First, it is a putative class action lawsuit. Second, in addition to naming four leading domainer firms, the plaintiffs provocatively go after Google for providing ads to domainer sites. I believe this is the first lawsuit against Google for its domainer relationships.
The complaint itself is a 121 page, 638 paragraph (with one paragraph enumerating 47 defined terms), 4.3MB behemoth alleging trademark infringement and dilution, ACPA violations, RICO and other claims."
AllAfrica.com: South Africa Domain Name Rules 'Are Working.'
Prof Goldman: "Domain Names Can't Be Trespassed -- Utube.com v. YouTube"
Domain Name Wire: "GoDaddy to Take Over RegisterFly's Domains" (As a result of ICANN's de-accreditation of registrar RegisterFly, 850k names have been transferred to GoDaddy, which already has 20 million names).
