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First URS case decided with Facebook the victor

Kevin Murphy, October 25, 2013, 11:43:22 (UTC), Domain Policy

Facebook has become the first company to win a Uniform Rapid Suspension complaint.

The case, which dealt with the domain facebok.pw, took 37 days from start to finish.

This is what the suspended site now looks like:

The URS was designed for new gTLDs, but .PW Registry decided to adopt it too, to help it deal with some of the abuse it started to experience when it launched earlier this year.

Facebook was the first to file a complaint, on August 21. According to the decision, the case commenced about three weeks later, September 11, and was decided September 26.

I don’t know when the decision was published, but World Trademark Review appears to have been the first to spot it.

It was pretty much a slam-dunk, uncontroversial decision, as you might imagine given the domain. The standard is “clear and convincing evidence”, a heavier burden than UDRP.

The registrant did not respond to the complaint, but Facebook provided evidence showing he was a serial cybersquatter.

The decision was made by the National Arbitration Forum’s Darryl Wilson, who has over 100 UDRP cases under his belt. Here’s the meat of it:

IDENTICAL OR CONFUSINGLY SIMILAR

The only difference between the Domain Name, facebok.pw, and the Complainant’s FACEBOOK mark is the absence of one letter (“o”) in the Domain Name. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the “.pw” is of no consequence here. The Examiner finds that the Domain Name is confusingly similar to Complainant’s FACEBOOK mark.

NO RIGHTS OR LEGITIMATE INTERESTS

To the best of the Complainant’s knowledge, the Respondent does not have any rights in the name FACEBOOK or “facebok” nor is the Respondent commonly known by either name. Complainant has not authorized Respondent’s use of its mark and has no affiliation with Respondent. The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent’s personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant’s mark’s goodwill. The Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name.

BAD FAITH REGISTRATION AND USE
The Domain Name was registered and is being used in bad faith.

The Domain Name was registered on or about March 26, 2013, nine years after the Complainant’s FACEBOOK marks were first used and began gaining global notoriety.

The Examiner finds that the Respondent has engaged in a pattern of illegitimate domain name registrations (See Complainant’s exhibit URS Site Screenshot) whereby Respondent has either altered letters in, or added new letters to, well-known trademarks. Such behavior supports a conclusion of Respondent’s bad faith registration and use. Furthermore, the Complainant submits that the Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Examiner finds such behavior to further evidence Respondent’s bad faith registration and use.

The only remedy for URS is suspension of the domain. According to Whois, it still belongs to the respondent.

Read the decision in full here.

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