WIPO Domain Name Decision DIE2007-0009 for facebook.ie

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Talkbeans Media Limited

Case No. DIE2007-0009

 

1. The Parties

The Complainant is Facebook Inc., Palo Alto, California, of United States of America, represented by Lovells, France.

The Registrant is Talkbeans Media Limited, Shankill, Co. Dublin, Ireland, and Dublin, Co. Dublin, of Ireland, represented by LK Shields Solicitors, Ireland.

 

2. The Domain Name and Registrar

The disputed domain name is registered with IE Domain Registry Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2007.

On December 17, 2007, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue.

On December 17, 2007, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).

In accordance with the IEDR Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on December 21, 2007. In accordance with the IEDR Rules the due date for Response was January 23, 2008.

The Response was filed with the Center on January 23, 2008.

The Center appointed James Bridgeman as the sole panelist in this matter on February 5, 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 IEDR Rules, paragraph 7.

 

4. Factual Background

The Complainant submits that since it commenced business in 2004, it has become an internationally recognized leader in providing online social networking services and related products and services delivered mainly through its website at the URL “”. The Complainant’s business started in a university setting in the United States of America and it has grown progressively. The Complainant’s website currently has more than 57 million active users throughout the world.

The Complainant is the registered owner of Community Trade Mark FACEBOOK, CTM number 2483857, filed on November 30, 2001 and registered on June 13, 2003 in classes 16, 35, 38 and 41; and Community Trade Mark THEFACEBOOK, CTM number 4554614, filed on August 22, 2005 and registered on August 4, 2006.

The Registrant is a media company with a website available at URL “”.

The Registrant registered the domain name in dispute on February 7, 2007.

The Registrant registered the name FACEBOOK as a Registered Business Name with the Companies Registration Office in Ireland on August 28, 2007.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has rights in the Protected Identifier FACEBOOK and relies on its rights in the above registered trademarks. The Complainant further claims to have established rights in the mark FACEBOOK as an unregistered website protected by Irish common law due to the substantial goodwill that it has rapidly acquired in the use of the FACEBOOK mark in relation to the provision of social networking services since it launched its website in 2004. The Complainant submits that as of December 10, 2007 there were 156,443 users registered in the “Ireland” section of the Complainant’s network. The Complainant further submits that there may well be more users within Ireland as users are free to join the network of any country that they wish. The Complainant’s website at the “” address is the seventh most visited website in Ireland.

The Complainant submits that the domain name in dispute is identical to the Complainant’s Protected Identifier FACEBOOK and confusingly similar to the Complainant’s Protected Identifier THEFACEBOOK.

The Complainant submits that in each case, the addition of the suffix “.ie” is irrelevant for the purposes of comparing the domain name with the Complainant’s Protected Identifier. In support of this submission the Complainant cites the UDRP case Laerdal Medical Corporation v. Locks Computer Supply,WIPO Case No. D2002-0063 (April 18, 2002) and submits that UDRP decisions should be taken into account in IEDRP cases, particularly where the phraseology of the two sets of rules are identical and the words of the IEDRP are open to interpretation.

The Complainant further submits that the deletion of the prefix letters “the” in the Complainant’s registered CTM service mark THEFACEBOOK from the domain name are not material and that there is a confusing similarity remaining.

The Complainant submits that the Complainant bears the burden of making out a prima facie showing that the Registrant has no rights in law or legitimate interest in the domain name in dispute and once the Complainant has discharged that onus, the evidential burden then passes to the Registrant to rebut the presumption that arises.

The Complainant submits that it carried out searches in various online databases and the results revealed that the Registrant has no Irish, Community or International trademark rights in the term FACEBOOK. (The Administrative Panel notes that the Complainant makes no reference to searches against United Kingdom registrations or any reference to rights in Northern Ireland that would be relevant.)

The Complainant asserts that the Registrant has not been authorised or otherwise licensed to use any of the Complainant’s trademarks and the Complainant and the Registrant are not affiliated in any way.

In correspondence, the Registrant has stated that it had registered the name FACEBOOK as a Registered Business Name. The Complainant submits that the registration of a Registered Business Name alone is insufficient to establish rights or legitimate interest in a domain name. Furthermore the Complainant submits that the domain name was registered on February 7, 2007 and the the Registered Business Name was not registered until six months later on August 28, 2007.

Furthermore a previous panel in Eoin Murphy and Ciaran Murphy trading as Wise Owl v. Paul Baird,WIPO Case No. DIE2006-0002 (June 29, 2006) has stated that registration of a business name does not of itself authorise use of the name if its use could be prohibited for other reasons.

The Complainant further asserts that the Registrant is unable to rely on any of the circumstances set out in paragraph 3.1 of the Policy in order to demonstrate its rights in law and legitimate interest in the domain name in dispute and deals in extenso with these provisions arguing that the Registrant: cannot assert that before receiving the cease and desist letter from the Complainant’s lawyers, its use of the domain name in dispute was in connection with a bona fide offering of goods or services, or the operation of a business in accordance with paragraph 3.1.1. of the Policy; that the domain name in dispute does not correspond to the personal name or pseudonym of the Registrant (the Registrant using the name, and being known as “Talkbeans”); that the domain name in dispute does not correspond to a good faith use of a geographical indication (given that the word FACEBOOK has no geographical significance).

The Complainant submits that the domain name was registered or is being used in bad faith.

The Complainant submits that the Registrant has registered the domain name in order to prevent the Complainant from reflecting the mark FACEBOOK, a Protected Identifier in which the Complainant has rights, in a corresponding domain name. The Complainant has registered a significant number of ccTLD domain names incorporating its FACEBOOK trademark. The Complainant claims that the Registrant, being aware of this, anticipated that the Complainant would be interested in registering its Protected Identifier on the Irish ccTLD domain and registered the domain name in dispute in order to prevent the Complainant from so doing.

The Complainant further submits that the Registrant has intentionally attempted to attract Internet users to its website by creating confusion with the Complainant’s Protected Identifier. The Registrant had become aware of the Complainant’s rapidly growing Internet based business and registered the domain name to take advantage of its reputation.

In email correspondence with the Complainant’s lawyers, the Registrant has argued that there is no reference to the name FACEBOOK on the Registrant’s website to which the ccTLD domain name in dispute resolves. The Complainant submits that this is irrelevant as the use of the Complainant’s trademark as a domain name results in initial interest confusion.

Following receipt of a cease and desist letter from the representatives of the Complainant, the Registrant, in inter partes correspondence, agreed to stop using the domain name to redirect Internet traffic to the Registrant’s website at the “” website. Shortly afterwards the Registrant arranged for the domain name to resolve to a website that displayed the words: “Facebook Beauty Clinic, Shankhill, Co. Dublin –Coming soon”. The Complainants have submitted a screen capture of the website containing that statement as an annex to the Complaint.

The Complainant submits that the Registrant was aware, or should have been aware, of the Complainant and its rights when the domain name in dispute was registered. In this regard the Complainant cites the decision of the learned panel in E. & J. Gallo Winery v. Oak Investment Group,WIPO Case No. D2000-1213 (November 12, 2000).

As of November 22, 2007 the Registrant’s website at the “www.” address redirected to the Registrants other website at the “” address on which the Registrant was providing social networking services. The Registrant’s website was self-described as “the professional and social networking site where individuals can connect with their friends, meet new people…” The Complainant submits that the Registrant therefore is a competitor of the Complainant in the provision of social networking websites.

Having been put on notice of this dispute, the Registrant subsequently and rapidly changed the content in an attempt to avoid liability. This the Complainant submits further demonstrates bad faith on the part of the Registrant.

B. Registrant

The Registrant states in the first paragraph of the Response that it no longer wishes to be the registrant of the domain name and consents to its transfer without any admission of liability.

The Registrant submits that immediately following receipt of the Complaint, the Registrant ceased use of the domain name in dispute in the manner to which the Complainant made objection, and informed the Complainant of this by email on November 27, 2007.

The Registrant furthermore assured the Complainant that it would not use the domain name in dispute for the purposes of social networking and virtual community and stated that it was not attempting to infringe the intellectual property rights of the Complainant.

Furthermore the Registrant denied that it was attempting to pass itself off as the Complainant. Without the benefit of legal advice, the Registrant believed that it could not transfer the domain name to the Complainant because it understood at the time that a .ie domain name cannot be transferred per se. The Registrant believed that to effect a transfer a .ie domain name must first be cancelled and then re-registered by the other party. This was perceived by the Complainant as a refusal to comply with its demands. The Registrant invited the Complainant to contact the Registrant should it require any further information but the Complainant commenced these proceedings instead.

The Registrant submits that on December 15, 2007, the Registrant “notified the IE Domain Registry of its cessation of ownership of the Disputed Domain Name for the purposes of having it reassigned to the Complainant on 15 December 2007”. At 11.16 hours on December 17, 2007, the IE Domain Registry confirmed that the domain name in dispute would be reassigned to the Complainant pending receipt from the Complainant of the new administrative information, however subsequent to that, the domain name was locked at 12.36 hours on the same day, December 17, 2007.

The Registrant’s request to assign the domain name was made prior to the commencement of these Administrative Proceedings by the Complainant on December 21, 2007 and the time when the domain name was locked.

The Registrant submits that in the present circumstances, the most sensible course of action is to terminate these Administrative Proceedings because the Registrant wishes to immediately cease ownership of the domain name in dispute and to reassign it to the Complainant.

In the circumstances the Registrant wishes to make no submissions relating to the application of the provisions of paragraph 1 of the IEDR Policy.

 

6. Discussion and Findings

Paragraph 1 of the IEDR Policy places on the Complainant the obligation to prove that:

1.1.1 a domain name at issue is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and

1.1.2 the Registrant has no rights in law or legitimate interests in respect of the domain name at issue; and

1.1.3 the domain name at issue has been registered or is being used in bad faith.

Paragraph 1.3.1 of the IEDR Policy provides inter alia that the concept “Protected Identifiers” for the purpose of the IEDR Policy includes trade and service marks protected in the island of Ireland.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the Protected Identifiers FACEBOOK and THEFACEBOOK through its abovementioned CTM registrations for each of these service marks. This Administrative Panel is also satisfied that the Complainant has established rights in the unregistered service mark FACEBOOK at common law in Ireland due to its recently, but extensively, established goodwill in the use of the FACEBOOK mark in relation to the provision of social networking and virtual community services in Ireland.

This Administrative Panel accepts the Complainant’s submissions that the suffix .ie may be ignored when comparing the domain name in dispute to the Complainant’s Protected Identifier.

This Panel is also satisfied that the deletion of the definite article as a prefix element does not in any way distinguish the domain name from the Complainant’s registered CTM service mark THEFACEBOOK.

The Complainant has therefore established the first element in the test set out in paragraph 1 of the IEDR Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Registrant has no rights in law or legitimate interest in the domain name at issue and thereby the onus shifts to the Registrant as argued by the Complainant.

The Registrant has had the opportunity but has not provided any submissions or evidence to endeavour to establish that it has rights in law or legitimate interest in the domain name.

On the evidence presented in the Complaint, the Registrant has registered the name FACEBOOK as a Registered Business Name. The registration does not in itself provide the Registrant with rights or legitimate interests in the name. In the view of this Administrative Panel it was correctly accepted by the learned panel in Eoin Murphy and Ciaran Murphy trading as Wise Owl v. Paul Baird,WIPO Case No. DIE2006-0002 (June 29, 2006) that the mere registration of a business name does not of itself authorise use of the name if its use can be prohibited for other reasons.

In the circumstances the Registrant has failed to discharge the onus of proof in respect of the second element of the test in paragraph 1 of the IEDR Policy and having made out a prima facie case, that has not been denied, the Complainant is therefore entitled to a finding in its favour that the Registrant has no rights or legitimate interests in the domain name in dispute.

C. Registered or Used in Bad Faith

FACEBOOK appears to be a distinctive coined word. The Complainant has achieved rapid and remarkable success and expansion since they launched its business using that name in connection with its social networking services in 2004.

The Complainant’s Community Trade Mark FACEBOOK, CTM number 2483857 was registered on June 13, 2003 having been filed on November 30, 2001. The Complainant subsequently registered Community Trade Mark THEFACEBOOK, CTM number 4554614 on August 4, 2006 having been filed on August 22, 2005.

The Registrant did not register the domain name in dispute until February 7, 2007. It is more than probable that the Registrant was aware of the Complainant’s business at the time of registration of the domain name because there is no other explanation for the Registrant choosing such a distinctive name and using it in connection with the same type of service as the Complainant.

It is clear from the evidence that not only did the Complainant seek to take predatory advantage of the Complainant’s goodwill by the association of the .ie ccTLD domain name with the Complainant’s website at “”, but the Registrant clearly registered the domain name intending to intercept Internet traffic intended for the Complainant and divert it to its own social networking site that purported to compete with the Complainant’s business.

This was clearly a conscious decision on the part of the Registrant to register the domain name in bad faith.

The Registrant has indicated that it is willing to transfer the domain name to the Complainant and suggests that the more appropriate way to proceed is for the Complainant to withdraw the Complaint. The Complainant has chosen to proceed with these proceedings as it is entitled so to do.

It is perhaps arguable that the Registrant is therefore not using the domain name in bad faith. It is not necessary to determine whether the Registrant is using the domain name in bad faith because under the IEDR Policy it is sufficient for the Complainant to prove that the domain name was registered in bad faith and it has done so. It is however very significant that the Registrant was clearly disingenuous in arranging for the domain name to resolve to a website that displayed the words: ”Facebook Beauty Clinic, Shankhill, Co. Dublin –Coming soon” at a time when it was aware of this dispute and subsequent to receipt of the cease and desist letter from the Complainant.

In the circumstances therefore the Complainant has succeeded in the third and final element of the test in paragraph 1 of the Policy and it follows that subject to the provisions of paragraph 6.1 of the Policy the Complainant is entitled to succeed in its application to have the domain name in dispute transferred to it.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the IEDR Policy and 15 of the IEDR Rules and subject to paragraph 6.1 of the IEDR Policy, this Administrative Panel orders that the domain name be transferred to the Complainant.

James Bridgeman
Sole Panelist

Dated: February 19, 2008

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