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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Callverse Pty Ltd

Case No. DAU2008-0007

 

1. The Parties

The Complainant is Facebook, Inc., Palo Alto, California, of United States of America, represented by Spruson & Ferguson Lawyers, Australia.

The Respondent is Callverse Pty Ltd, Edgecliff, New South Wales, of Australia.

 

2. The Domain Name and Registrar

The disputed domain name <facebook.com.au> is registered with NetRegistry Pty Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2008. On March 7, 2008, the Center transmitted by email to NetRegistry Pty Ltd, a request for registrar verification in connection with the domain name at issue. On March 10, 2008, NetRegistry Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 25, 2008, a hardcopy of the Complaint was received by the Center. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2008. The Response was filed with the Center on April 15, 2008.

The Center appointed John Swinson, Warwick A. Rothnie and James A. Barker as panelists in this matter on May 14, 2008. 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 the Rules, paragraph 7.

 

4. Factual Background

The Complainant is 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. As at May 23, 2008, the Complainant’s website at www.facebook.com was the sixth-most trafficked website in Australia and the eighth-most trafficked website globally.

The Complainant is the owner of numerous FACEBOOK trademarks that are registered in many countries worldwide. It has five registered trademarks for the word FACEBOOK in Australia. Two of those trademarks were registered prior to the commencement of these proceedings, and three became registered during the course of these proceedings. (Trade Mark 1100642, registered from February 23, 2006; Trade Mark 1101190, registered from February, 27, 2006; Trade Mark 1164095, registered from February 28, 2007; Trade Mark 1154693 registered from December 22, 2006; and Trade Mark 1211165, registered from November 19, 2007).

The Respondent is a corporation registered in Victoria, Australia. The disputed domain name was first registered by Cocktail King Australia Pty Limited, a company related to the Respondent, on December 12, 2005 and was transferred to the Respondent in October 2007.

The Respondent is a proprietor of the New South Wales business name “Face Book”.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant, and its services offered through the website “www.facebook.com”, is widely known around the world and in Australia. It has over 100 domain names consisting of or comprising the term FACEBOOK, all of which resolve to the website “www.facebook.com”.

The Complainant’s website “www.facebook.com” is the fifth most-trafficked website on the Internet and is the sixth most popular website visited by Internet users in Australia. The Complainant has had members in Australia since December 2005, and currently has over 1.6 million members in Australia.

The Complainant is the registered proprietor of, and applicant for, various Australian trademarks incorporating the mark FACEBOOK. The Complainant is also the registered proprietor of numerous trademarks incorporating the mark FACEBOOK in various countries around the world.

The disputed domain name contains the Complainant’s registered and common law trademarks for the word FACEBOOK in its entirety and is either identical or confusingly similar to those trademarks.

The Respondent has no Australian or International trademark rights in the mark FACEBOOK or FACE BOOK. There is no White Pages or Yellow Pages telephone listing for the business known as “Face Book”. As at the date of registration of the disputed domain name there was no proper basis for the Respondent to meet the eligibility criteria for the domain name.

The Complainant and Respondent are not affiliated with each other in any way and the Respondent has never been authorized or otherwise licensed or permitted by the Complainant to use any of its trademarks.

The disputed domain name has been held by the Respondent and a related entity for a combined total of more than 2 years. The Respondent is not engaged in any good faith business activity using the name FACEBOOK (or “Face Book”). No actual goods or services have been offered through the website published on the disputed domain name under or by reference to the name “Face Book”. The Website is primarily a vehicle for re-directing Internet traffic to promote goods and services of related companies. Since being notified of this dispute (when the Complainant’s legal representatives sent a cease and desist letter to the Respondent), the disputed domain name has resolved to a temporary holding webpage published by the Respondent.

The Respondent’s related company, Cocktail King Australia Pty Limited (being the original registrant of the disputed domain name) has engaged in a pattern of registering the trademarks of famous international brands.

The Complainant’s website www.facebook.com is well-known worldwide. The registration of the disputed domain name occurred one day after universities in Australia and New Zealand were added to the Complainant’s facebook network. It is inconceivable that the Registrant did not know the Complainant’s fame and was not attempting to trade off this fame.

The Respondent has not traded under and is not known by the name “Face Book” other than the transparent temporary webpage appearing on the disputed domain name which did not have any reference to the business name “Face Book” as at October 19, 2007. The Respondent’s business name “Face Book” was registered soon after a report in Business Week which reported that the Complainant declined an acquisition offer of $750 million.

The natural Australian domain name space for the Complainant to register its well-know FACEBOOK trademark is the disputed domain name. The disputed domain was registered in order to prevent the owner of the trade mark from reflecting that name in the corresponding domain name.

Given the fame and reputation which the Complainant has in its FACEBOOK trademark and its website situated at “www.facebook.com”, Internet users will visit the website published on the disputed domain name in the mistaken belief that it is the natural address of the Complainant’s corresponding domain name in Australia.

Registration of the disputed domain name by Cocktail King Pty Limited was not coincidental given the date of registration and the corresponding date of the expansion of the Complainant’s online network services into Australia.

The Respondent’s use of the disputed domain name misleads or deceives, or is likely to mislead or deceive, members of the public into believing that any website published on the disputed domain name is published or provided on behalf of the Complainant or with the Complainant’s license, sponsorship or approval.

The Respondent acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant for valuable consideration in excess of the Respondents out-of-pocket costs directly related to the domain name.

B. Respondent

The Respondent makes the following contentions:

It is well established that a complainant’s trademark rights (whether registered or common law rights) must pre-date the registration of a disputed domain name. The Complainant had no registered or common law trademark rights to FACEBOOK in Australia that predates the registration of the disputed domain name. The Complainant’s Facebook service was introduced into Australian universities (not the public generally) one day before the disputed domain name was registered.

The Complainant has offered no evidence about the use of its services to indicate that the Respondent would have been aware of the service at the time it registered the disputed domain name.

The Respondent used the generic terms “face” and “book” to form its domain name.

The Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is a legitimate business with an established click-to-call service. The Respondent has made considerable financial investment in the technology and plans to go ahead with the click-to-call service on June 1, 2008. The Respondent’s efforts to develop its click-to-call service, for which it will use the disputed domain name, establishes its rights or legitimate interests in the disputed domain name.

The disputed domain name has never been used in a way that could disrupt the Complainant’s business. This is evidenced by the two year delay between the Respondent’s registration of the disputed domain name and the Complainant’s legal representatives sending the cease and desist letter to the Respondent.

The Complainant fails to establish that the Respondent had constructive notice of the Complainant’s rights in Australia because the Respondents registration of the disputed domain name pre-dates any use of the Complainant’s marks in Australia. Without notice, there can be no way that the Respondent’s registration can be construed as bad faith registration.

The Complainant has presented no evidence that Respondent registered the disputed domain name for the purpose of selling it to Complainant. The Respondent offered to sell the disputed domain name to the Complainant on a “without prejudice” basis for an amount it considered reasonable after being contacted by the Complainant’s legal representatives. The Complainant shows no evidence that the amount requested by the Respondent for the disputed domain name was unreasonable.

Inactive use of the disputed domain name by the Respondent is not sufficient evidence to constitute bad faith registration.

The Complainant fails to cite any published decision which establishes evidence that any domain name registration by Cocktail King Pty Limited (a related company) has been transferred or cancelled based on a finding of bad faith.

 

6. Discussion and Findings

To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain name registered by the Respondent is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect to the domain name; and

(iii) the domain name has been registered or subsequently used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

To prove this element the Complainant must have rights in a name, trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant’s name, trademark or service mark.

The Complainant is the owner of four registered marks in Australia containing the word FACEBOOK (Trade Mark 1100642, Trade Mark 1101190, Trade Mark 1164095 and Trade Mark 1211165). The Complainant also has numerous trademarks in various other countries (as detailed in Annexure I to the Complaint), the earliest of which was applied for in the United States of America on February 24, 2005.

The Respondent contends that it is well established that a Complainant’s trademark rights (whether registered or common law rights) must pre-date the registration of a disputed domain name to establish this element of the Policy. On the contrary, it is commonly understood, as demonstrated inter alia by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (previous panels and decisions cited therein), that the “[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity.” As with the Uniform Dispute Resolution Policy, the auDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. If the registration of the disputed domain name by the Respondent predates the Complainant’s acquisition of trademark rights in the word FACEBOOK (and this Panel is not convinced that it does), that fact may be relevant to the assessment of whether or not the respondent has rights or legitimate interests in the domain name or of registration in bad faith, which is considered below (see for example Digital Vision, Ltd. v. Advance Chemill Systems, WIPO Case No. D2001-0827 and Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193).

The Panel therefore finds that the Complainant has registered trade mark rights in FACEBOOK. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s FACEBOOK trade mark.

The disputed domain name contains the entirety of the Complainant’s trademark. It has been held in many prior panel decisions that when a domain name incorporates a distinctive mark in its entirety it is confusingly similar to that mark (see for example EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. WIPO Case No. D2000-0047).

The Complainant’s mark is inherently distinctive (see Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT WIPO Case No. D2007-1193). The Panel therefore finds that the disputed domain name incorporates a distinctive mark in its entirety and is confusingly similar to the Complainant’s trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”

For the reasons outlined below in connection with registration and use in bad faith, the Panel does not find that the Respondent has rights in the domain name acquired before the Complainant acquired its rights.

As noted above, the disputed domain name is identical to the Complainant’s marks. The Complainant’s marks are distinctive and well known internationally. As at May 23, 2008, the Complainant’s website at “www.facebook.com” was the sixth-most trafficked website in Australia and the eighth-most trafficked website on the Internet (globally). The disputed domain name is the logical, or as the Complainant contends “natural”, domain name for the Complainant’s operations in Australia. Consequently, it is highly likely that a significant number of Internet users would believe that the disputed domain name would lead to the Complainant’s website. The original registrant of the disputed domain name, Cocktail King Pty Limited (“the Original Registrant”), had, and continues to have, no connection with the Complainant.

The Respondent became the registrant of the disputed domain name (by transfer) in or around October 2007. Since that time, the Respondent has never offered any products or services of its own under the name “Face Book” or FACEBOOK. (The Original Registrant also did not offer goods or services using the name “Face Book” or FACEBOOK.) There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent has no trade or service mark rights in “Face Book” or FACEBOOK. There are no White Pages® or Yellow Pages® telephone listings for a business called “Face Book” or FACEBOOK. The Respondent provided essentially no evidence for its contentions e.g. that it has “an established click to call service” or has made “considerable financial investment” in what it says is its business model for the website.

The Respondent was notified of the subject matter of the dispute when it received the cease and desist letter from the Complainant’s lawyers on or around October 19, 2007. As at May 23, 2008 there were still no actual goods or services offered from the disputed domain name under the name FACEBOOK or “face book”. The disputed domain name resolves to a website which states “we are launching soon” and contains references to, and advertisements for, other businesses in which the owners of the Respondent have an interest.

In order to demonstrate a bona fide use of, or demonstrable preparations to use, the domain name in connection with an offering of a “click-to-call” service, the Respondent seeks to rely on “considerable financial investment in the [relevant] technology” and “plans to go live on June 1, 2008” (as at June 1, 2008, the service was not “live” and the website at the disputed domain name states “We are launching soon.”). However, the Respondent has not provided any evidence supporting its assertions of demonstrable preparations to use the disputed domain name (see Indofil Chemicals Company v. Amar Vakil, WIPO Case No. D2006-0792 and Empresa Municipal Promociуn Madrid S.A. v. Easylink Services Corporation, WIPO Case No. D2002-1110 for examples of evidence provided by a Respondent to support a claim of demonstrable preparations to use a domain name).

In the alternative, the Respondent appears to argue that the disputed domain name comprises generic terms (“face” and “book”), and so gives the Respondent a right or legitimate interest as the first to register them as a domain name. But it does not appear to the Panel that the combination of those two words is generic. The Respondent’s argument is also contrary to prior panel decisions, as well as this Panel’s finding (above), that the Complainant’s mark is distinctive in a trademark sense. Moreover, the conjoined term does not appear to this Panel to be literally descriptive of the service the Respondent claims it intends to use the domain name for.

The disputed domain name, until very recently (since being owned by the Respondent), resolved to a website which contained advertisements for other businesses which the owners of the Respondent have an interest in, and a Google search engine interface that possibly is a source of revenue for the Respondent. The name “Facebook” or “Face book” would seem to have no real value to the Respondent except as a means of obtaining advantage from the goodwill of the Complainant’s well known mark to generate traffic to its website (at the disputed domain name) by mistake so that the Respondent can potentially receive commercial gain from Internet users who intended to visit the Complainant’s website.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered or Subsequently Used in Bad Faith

The Complainant must prove on the balance of probabilities that the domain name was registered in bad faith or that it has subsequently been used in bad faith.

Registration in Bad Faith

In order to determine whether a domain name was registered in bad faith, it is necessary to determine when registration occurred. As noted above, the Respondent is not the original registrant of the disputed domain name. It became the registrant of the disputed domain name upon transfer from the Original Registrant in or around October 2007. It has been established in a number of previous panel decisions that the acquisition of a domain name from a previous registrant constitutes registration within the meaning of the UDRP policy (see for example MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270; Sociйtй Air France v. Vladimir Federov, WIPO Case No. D2003-0639, Laure Pester (Lorie) and Sony Music Entertainment France SA v. Movie Name, WIPO Case No. D2003-0312; see also paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Registration in bad faith must occur at the time the current registrant took possession of the domain name (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). This panel applies the rationale of these decisions to the auDRP. Consequently, for the purposes of this decision, the date of registration is the date the disputed domain name was transferred from the Original Registrant to the Respondent.

Paragraph 4(b) of the Policy enumerates four circumstances which evidence a respondent’s registration or use of a domain name in bad faith. The first three of those relate to registration:

“[T]he following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person.”

The Panel is not limited to the application of the circumstances of paragraph 4(b) of the Policy, to determine whether the disputed domain name was registered (or used) in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors (see for example Wild West Domains, Inc. v. Neo Jung, WIPO Case No. D2004-0243; Bayer AG v. Daniel H. Davies, Interplanetarium Corp., WIPO Case No. D2003-0908).

A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not automatically lead to a conclusion of bad faith, but the facts are relevant to the bad faith inquiry (see MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270).

The Panel believes that it is improbable that the Respondent would not have been aware of the Complainant and its marks when it obtained registration of the disputed domain name in October 2007. At that time, the online social network of FACEBOOK was internationally renowned, and had received media publicity in Australia, as evidenced by Annexure J to the Complaint. From September 2006 to September 2007, one month prior to the Respondent obtaining registration of the disputed domain name, the Complainant’s website, “www.facebook.com”, increased from being the sixtieth-most trafficked website on the Internet to the seventh-most trafficked website on the Internet.

As noted above the name “Facebook” would seem to have no real value to the Respondent except as a means of obtaining advantage from the goodwill of the Complainant’s well known mark. The Respondent has a number of naming options that would more appropriately identify the services it alleges will be offered from the disputed domain name (see Pepperdine University v. BDC Partners, Inc. WIPO Case No. D2006-1003). The evidence suggests that the Respondent, motivated by profit, obtained registration of the disputed domain name to exploit the trademark of the Complainant

On balance, it can be inferred from the evidence that the Respondent obtained registration of the disputed domain name for the purpose of disrupting and/or free-riding on the business or activities of the Complainant and hindering the Complainant’s ability to further expand its business in Australia. The Panel finds that the Respondent obtained registration of the disputed domain name in bad faith in October 2007.

Further, even if the Panel’s view about the relevant date of registration of the disputed domain name is incorrect, the Panel is satisfied that, on balance, that the disputed domain name was registered in bad faith by the Original Registrant. Despite the Respondent’s contentions, the Original Registrant, did not simply register any generic domain name. The disputed domain name consists of two common terms used in an imaginative manner which cannot generally be found in dictionaries (see Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193). It is difficult to credit sheer coincidence with the fact that the disputed domain name so closely resembled the distinctive mark of the Complainant and was first registered one day after the Complainant’s Facebook services were launched in Australia (see for example Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd & Ors (1981) 5 ACLR 532 where similar issues were discussed).

Use in Bad Faith

Paragraph 4(b) of the policy provides that the following circumstance shall be evidence of use of a domain name in bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”

As noted above, the Panel is not limited to the application of the above circumstance to determine whether the disputed domain name was used in bad faith.

Given the Complainant’s numerous trademark rights for FACEBOOK, and its wide reputation, it is difficult to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. As noted above, the disputed domain name is the logical domain name for the Complainant’s operations in Australia. Consequently, it is highly likely that a significant number of Internet users would believe that the disputed domain name would lead to the Complainant’s website. It is also highly likely that the Respondent was aware of the Complainant’s distinctive and famous marks when it obtained registration of the disputed domain name. By using the disputed domain name, the evidence suggests that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source of that website or location of an online social network service on that website.

The word FACEBOOK is clearly connected with the Complainant’s well known online social network service and its very use by the Respondent, someone with no connection with the service, suggests opportunistic bad faith (see Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Bayer AG v. Daniel H. Davies, Interplanetarium Corp., WIPO Case No. D2003-0908).

Taking into account all of the matters outlined above, the Panel is not satisfied that the Respondent could use the disputed domain name in a way that would not be illegitimate, such as by being an infringement of consumer protection legislation or the Complainant’s rights under trademark law (see Bayer AG v. Daniel H. Davies, Interplanetarium Corp., WIPO Case No. D2003-0908).

The Panel finds that the Respondent has used the disputed domain name in bad faith. Accordingly, the Panel finds that Paragraph 4(a)(iii) of the Policy is satisfied.

 

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,<facebook.com.au>, be transferred to the Complainant.

Dated: June 4, 2008