Facebook obtains transfer of 'facebook.com.au'

In Facebook Inc v Callverse Pty Ltd (Case DAU2008-0007A, June 4 2008), a World Intellectual Property Organization panel has ordered that the domain name 'facebook.com.au' be transferred to Facebook Inc, describing the use of the trademark FACEBOOK in the domain name at issue as "opportunistic bad faith".
Facebook was founded in 2004 and is a recognized leader in providing online social networking services. By May 2008 Facebook’s website (at 'facebook.com') was the sixth most-trafficked website in Australia and the eighth most-trafficked website globally. The domain name 'facebook.com.au' was first registered by Cocktail King Australia Pty Limited in December 2005 and was transferred to Callverse Pty Ltd in October 2007.
In accordance with the '.au' Dispute Resolution Policy, Facebook had to demonstrate that all of the elements set out in Paragraph 4(a) of the policy had been satisfied - namely that:
  • the domain name registered by Callverse was identical or confusingly similar to a name, trademark or service mark in which it has rights;
  • Callverse had no rights or legitimate interests in the domain name at issue; and
  • the domain name had been registered or subsequently used in bad faith.
In respect of the first issue, Callverse relied on the fact that the Facebook service was first introduced into Australian universities (not the public generally) only one day before 'facebook.com.au' was registered. However, the panel accepted that the registration of a domain name before a complainant acquires trademark rights in the name does not of itself prevent a finding of identity or confusing similarity. The registration of a disputed domain name which predates a complainant’s acquisition of relevant trademark rights is relevant (if at all) only to the assessment of whether:
  •  the respondent has rights or legitimate interests in the domain name; and/or
  •  the respondent registered the domain name in bad faith.
The panel was also satisfied on the second point because Callverse did not offer any products or services of its own under the name Facebook (nor did its predecessor, the original registrant). Specifically, Callverse had no White Pages or Yellow Pages telephone listings for a business called Facebook. Moreover, Callverse provided no evidence for its assertion that it had "an established click-to-call service" or had made "considerable financial investment" in what it said was its business model for its website.
Callverse also argued that 'facebook.com.au' was simply a combination of two generic terms ('face' and 'book'), which gave Callverse a right or legitimate interest as the first to register these terms as a domain name. The panel rejected this argument on the grounds that:
  • the combination of the two words is not generic;
  • the term 'facebook' is distinctive in a trademark sense; and
  • the conjoined term is not literally descriptive of the services for which Callverse allegedly intended to use the domain name.
With regard to the third requirement, the panel decided that the test for bad faith must be applied as at the date on which the current registrant took possession of the domain name. Consequently, for the purposes of this decision, the relevant date was October 2007 (ie, the date on which the disputed domain name was transferred from the original registrant to Callverse).
By October 2007, the Facebook online social network was internationally renowned and had received considerable media publicity in Australia. Therefore, the panel found that it was "improbable" that Callverse would not have been aware of the Facebook service when it obtained registration of the disputed domain name. Further, the panel held that the name Facebook would have no real value to Callverse, except as a means of obtaining advantage from the goodwill of the well-known mark FACEBOOK. This consideration was supported by the fact that Callverse had a number of naming options that would more appropriately identify the services that would allegedly be offered under the domain name 'facebook.com.au'.
On balance, the panel inferred that Callverse:
  • obtained registration of 'facebook.com.au' for the purpose of disrupting and/or free-riding on the business or activities of Facebook, as well as hindering Facebook’s ability to further expand its business in Australia; and 
  • attempted to attract internet users to its website for commercial gain by creating a likelihood of confusion with Facebook’s well-known mark as to the source of that website or location of an online social network service on that website.
Julian Gyngell, Julian Gyngell, Wahroonga

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