On ” Identical or Confusingly Similar” the arbitrator writes:
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.
On “Rights or Legitimate Interests”
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.
Note: Half a second to look at Archive.org will tell you there was PPC listings on the domain for a long time. Monetizing generic terms (and “face book” is a generic term) is a bona fide offering. I know arbitration bodies don’t like to hear about it, but truth be told here, monetizing domains through Pay Per Click model (PPC listings) is a legitimate business, a billion dollar industry.
And on “Registered and Used in Bad Faith”, among other ridiculous findings, the arbitrator writes:
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.
Note: “Imaginative manner”? It’s a natural word combination, been used many years before the site was born.
And..
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.
Note: The original registration was 2001. I guess whoever registered it there (Sephora) just knew Facebook gonna be there later?
This case was handled by Brigitte Joppich (PDF), the same panelist who apparently mishandled the case for the domain BritishMuseum.org.
Why would WIPO and other arbitration bodies be biased towards Corporate America? Few reasons:
1. They are the ones filing those cases, generating arbitration revenues.
2. Since Corporate America usually file many cases, signaling one company that arbitration “loves” them means more cases coming their way.
3. If arbitration hands down a flawed decision, as in this case (imo of course), it creates hope for those who know they have no rights, to file as well.
For Corporate America, the reward is the transfer of the domain, not the more logical solution of fixing the confusion. Since arbitration bodies treat a 100$ domain or a 10 millions domain the same, for 1,500$, it’s the cheapest bet in town.
To sum it up, even though respondent could have replied they chose not to, for whatever reason. In my opinion, as in many arbitration cases, the decision to hand over the domain to Facebook was made before the complaint was read, and the decision itself is to satisfy the public that thought was given to the case, as odd as it may sound like.
Wow. You register a name before any trademark and that can still considered in bad faith. Whats next we put people in jail based on what “pre-cogs” foresee like in minority report. The domain community needs to highlight and fix this problem.
I think this is a bad ruling because “face-books” are generic things.. Terms in use long before the portal Facebook.com became wildly popular. This registrant appears to predate Facebook (the portal) so there is clearly no bad faith.
Imagine the registrant of Face-book.com was on a hiking tour in the Andes.. and had no idea his registration was the subject of a dispute, or that said registration had been dislodged.
The entire matter seems to have been handled in a somewhat biased/hurried manner in favor of the portal. This registrant should have challenged the dispute at UDRP and based on this outcome, should now chqallenge in the courts. Pitty they have to go through the acrimony to restore their position.
It should be noted that the domain name has changed hands several times since first registered by Sephora. I believe that changes the equation somewhat.
Fellow Domainers
When will the day come when we will not need to register a trademark for every single generic ( and especially 3-character) domain name that we own, in every single jurisdiction in the world, in order to be able to protect our domain names? When will it be enough in owning the very domain name, that will give us ” legitimate ownership” over 50 or more other entities that may have some form of trademark in those generic words and/or acronyms that make up our generic domain names ??
Although there is great opposition coming towards domainers, especially over the past month, we must continue to stand united with organizations such as ICA to defend these many times extremely unfair acts and rulings on our generic domain names.
Generic for what exactly, though?
The word caterpillar itself is generic for the larva. But is it generic if it’s used arbitrarily (hint) to market construction equipment?
It seems the problem here is that face-book.com eventually displayed ads for services competing with Facebook sometime after
Generic for what exactly, though?
The word caterpillar itself is generic for the larva. But is it generic if it’s used arbitrarily (hint) to market construction equipment?
It seems the problem here is that face-book.com eventually displayed ads for services competing with Facebook sometime after its trademark registration was approved. A little check at the WayBack Machine will confirm this.
This is actually one exception to the commonly-held belief that domain names registered before their trademark-sakes are established are generally safe. Learn and adapt from this, folks.
Anyway, the main reason why the complainant won is because the respondent didn’t reply to challenge their claims for whatever reason. If they did, the outcome might have been different.
But hey, let’s at least see if the complaining party is at least intelligent enough to follow the remaining UDRP procedures to ensure the domain name they won in it is finally transferred to them.
I can understand the idea behind face book being generic and a little different than registering something like coca cola. And this is kind of a separate topic but the advent of the domaining industry is making it difficult to get domains. Compared to just a few years ago anything possibly useful for a business is gone. And the url is not used just picked up for adsense. In a few years people are going to be registering http://www.jwklejr.com just because that is all that is left. I think that will hurt internet commerce.