TUESDAY, 21 SEPTEMBER 2010
Are you on facebok?

In a rather straightforward case (No. D2010-1247), decided before WIPO’s administrative panel, Facebook Inc. succeded in having the domain name <facebok.com> transferred to them. The domain name was initially registered by Mr Bauer of Germany on April 2009. According to the decision, as of July 27, 2010, the disputed domain name re-directed visitors to “http://freebiesfrog.com”, a site that recreated a similar look and feel to the Facebook website. Users were invited to complete surveys about their online experience with the promise of receiving a free (and fairly expensive) gift. Users were then redirected to a new website where they must sign up for a credit card or other type of consumer loan in order to qualify for the gift. The decision includes a summary of Facebook’s story, recognition of the world-wide reputation of the Facebook mark and very useful citations of relevant WIPO decisions.

 

On the issue of confusing similarity Jon Lang, the sole panelist,  cited Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For sale, WIPO Case No. D2000-0662 where it was held  that “…In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.” Moving on to the analysis on the respondent’s rights or legitimate interests, the sole panelist held that “legitimate interests cannot be created where the registrant would not choose the domain name in question unless it were for the purposes of capitalising on Internet users making typographical errors when searching for a website that has nothing at all to do with the registrant. Re-directing Internet users to a website they have no wish to visit because they mistype and happen to stumble upon a domain name intended to be confusingly similar to the trademark of the entity the user hopes to find on the Internet, can hardly be said to be a bona fide use of the domain name. Moreover, given the use to which the Domain Name has been put, it can hardly be said that there is any legitimate non-commercial or fair use.The Respondent has no known connection or affiliation with the Complainant, or its trademark. In fact, there is no evidence at all before this Panel that the Respondent has any rights or legitimate interests in the Domain Name. Nor is there any evidence before this Panel to contradict or challenge the contentions of the Complainant. In all the circumstances therefore, this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and accordingly finds that this element too of paragraph 4(a) of the Policy is established.”

The typosquatting element was also employed to decide bad faith. The sole panelist cited Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 “ ‘Respondent’s practice of using the domain names for the purpose of diverting users to an unrelated Internet site is "classic bad faith.", as well as Backstreet Prods., Inc. v. Zuccarini, WIPO Case No. D2001-0654 and AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937 to find that misspellings alone are sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy.

It is interesting to note how the disputed name appears to have been brought to Facebook’s attention (also) by its users. A good deal of relevant comments of indeed confused Facebook users appear at the Facebook Help Center here and seem genuine enough.

 


Posted by: Nikos Prentoulis @ 14.34
Tags: WIPO, domain names, facebook, facebok,,
0 Comments    Post a comment