CLASS 46
Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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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,,
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