Facebook, Inc. just won a UDRP on the domain name Facebook.info

The domain name was registered in September 2004.

Most recently the domain was going to a page which stated on the top:

“not in any way affiliated with the social network available at Facebook.com”

The domain was not a “parked page” and did not contain any advertising, but news feeds of stories for Facebook, TechCrunch and other media outlets.

It’s a very interesting decision and much more detailed and complicated than you might have thought

At the end of the day the panel awarded the domain to Facebook because they “Just didn’t believe the domain holders story”

Here are the relevant facts and findings:

“Complainant holds various trademark registrations for the mark FACEBOOK, including a registration dated January 10, 2006 with the United States Patent and Trademark Office.  This registration, in connection with “an online directory information service,”  indicates a first use in commerce of the mark FACEBOOK on February 4, 2004.”

“Initially, Complainant offered its services at “thefacebook.com,” and later acquired the domain name “www.facebook.com” in 2005.  Complainant alleges, and has supplied numerous media reports for support, that even in the early days of 2004 the public was referring to Complainant’s service simply as “Facebook,” without the article “the.”

“According to Complainant, Respondent Igor Dolgalev graduated from Cornell University in 2005 with a bachelor’s degree in biological sciences and computational biology.  Complainant further alleges that in 2001, Respondent co-founded a website supplying online users with old versions of various computer programs.  Complainant also alleges that a person named “Igor Dolgalev” joined Facebook as early as April 23, 2004. ”

“The Facebook page indicates that this member studied at Cornell and lives in Brooklyn, New York.  Elsewhere in the Complaint, Complainant alleges:  “The Complainant [sic – should be “Respondent”] himself created a Facebook account on 23 April 2004, five months before registering the Domain Name.”

“Nowhere in his Response does Respondent deny the allegation that he joined Facebook in April 2004.  Rather, Respondent states:  “Complainant submits only an un-authenticated document purporting to show that someone with Respondent’s name registered for Complainant’s service.”

“The Domain Name was registered on September 25, 2004.  ”

“The Domain Name was inactive until March 10, 2008.  From March 10, 2008 to March 28, 2009, the Domain Name resolved to a blank web page displaying “facebook.info” in the upper left corner.

“Since March 28, 2009, the Domain Name has resolved to a website which gives the visitor two options: “twitter” and “other.”

“Twitter is, of course, another leading social media Internet service.  If one clicks the “twitter” link, one who has established a Twitter account may download a “facebook.info Twitter application”.

“This application permits the user to post blog messages (known as “Tweets” in the Twitter world) and states that the user “just added a post over at http://facebook.info/twitter.”  According to Respondent, this “very basic website” was intended solely to allow “users to contribute to discussion forums about any subject.”

“Respondent claims, and supports through an affidavit, that at the time he registered the Domain Name he was a student at Cornell University.  He claims that the university had a directory of students and their photographs, and students “referred to it as the ‘facebook.’”

“Respondent states:  “Everyone on campus was familiar with the college facebook directory, and students (including myself) often got together to peruse the campus facebook.”  An actual copy of an excerpt of the alleged Cornell “facebook” is not annexed to the Response.

Respondent also asserts:

“Around the same time [September 25, 2004], I was becoming interested in registering the domain names of generic dictionary words.  The domain name registrar 1&1 had a promotion to register domain names with the .info gTLD for about one dollar.  Because of this promotion, I registered the .info version of the dictionary word “facebook.”

“Respondent did not indicate which other, if any, “generic dictionary words” he registered as domain names based on his claimed newfound interest.  In any event, Respondent claims to have had “some ideas” for the development of a website at the Domain Name at the time he registered it.  For instance, he claims, “I thought I could use it as some sort of discussion forum, or directory of photographs similar to the Cornell University facebook.”

“Respondent denies ever making commercial use of the Domain Name or deriving any income from the Domain Name.  He also denies ever trying to sell the Domain Name.”

“On August 3, 2009, Complainant sent an email to Respondent asserting that Respondent’s registration and use of the Domain Name infringed United States trademark and anticybersquatting laws, and demanding the transfer of the Domain Name.  ”

“On August 4, 2009, Respondent replied by email.  Respondent denied using the Domain Name in bad faith, and asserted that “Facebook is a generic term.”  Respondent also noted that he had owned the Domain Name registration for more than four years and Complainant had not asserted any rights to it.  Finally, Respondent also wrote:

“At the time of registration of the domain in question, facebook.com belonged to AboutFace.  It was purchased by Facebook in 2005.  If hypothetically I registered the domain for cybersquatting purposes, it was not targeted at Facebook.”

“The record shows no subsequent communication between the parties prior to the filing of this Complaint.”

“Complainant concedes that the word “facebook” was “originally used as a generic term to describe a directory consisting of individuals’ photographs and names,” but asserts that “it is clear that by the time the Domain Name was registered the term had become distinctive of the Complainant, as illustrated by the numerous press extracts referred to above.”

“Respondent also argues that, if he were truly seeking to infringe Complainant’s intellectual property rights in September 2004, he would have registered <thefacebook.info> instead of the Domain Name, since Complainant was known as “THE FACEBOOK” until 2005.  In this connection, Respondent asserts that <thefacebook.info> was available for registration on September 25, 2004.”

“In its Supplemental Filing, which the Panel in its discretion has decided to consider, Complainant points out that <thefacebook.info> in fact was not available on September 25, 2004;  it had been registered by a third party one week earlier, on September 18, 2004.”

“The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name under the Policy.”

“The chief problem for Respondent is that the Panel does not believe his story.  ”

“In the Panel’s view, Respondent lost a tremendous amount of credibility by failing to rebut the simple and important allegation that he had joined Facebook on April 23, 2004, five months before registering the Domain Name.  ”

“Rather than admit or deny this critical allegation, Respondent offers an evasive response:  “Complainant submits only an un-authenticated document purporting to show that someone with Respondent’s name registered for Complainant’s service.”

“If Respondent was not in fact the Cornell student from Brooklyn, New York with the name Igor Dolgalev who had signed up with Facebook on April 23, 2004, Respondent should have said so.”

“His evasive comment leads the Panel to regard with suspicion everything Respondent asserts which cannot be independently corroborated.”

“The Panel does not accept Respondent’s explanation about what motivated his decision to register the Domain Name. ”

“Nor does the Panel accept that Respondent registered the Domain Name because it was a “generic dictionary word” and he was interested in setting up an innocuous discussion website or a student photo directory of some sort.  In sum, the Panel concludes that there is no credible evidence that any of the grounds for establishing rights or legitimate interests in the Domain Name is present.”

“Respondent’s lack of credibility colors the Panel’s view of the “bad faith” issue under the Policy.”

“Based on the record, the Panel concludes that Respondent had Complainant’s FACEBOOK mark in mind when registering the Domain Name. ”

“There is ample record evidence that, by September 25, 2004 (the date the Domain Name was registered), Complainant’s services had been widely referred to as FACEBOOK.  The Panel also finds that Respondent joined Facebook in April 2004, five months before registering the Domain Name. ”

“The Panel also finds that, in 2004, Respondent was computer-savvy and a sophisticated Internet user, having co-founded in 2001 a website supplying online users with old versions of various computer programs.  This fact, coupled with Respondent’s actual knowledge of Complainant’s mark in September 2004, leads the Panel to conclude that Respondent registered the Domain Name in bad faith.”

As respects bad faith use, the Panel concludes that “passive use” may constitute bad faith under the Policy in appropriate circumstances.”

“The Telstra “passive use” doctrine has typically been applied where the trademark in question is particularly strong.  In the instant case, FACEBOOK was a mark not only known to Respondent in 2004, but it was a mark quickly gaining notoriety even in its early months in 2004.  Indeed, it had become a famous mark by any measure by the late 2000s.  The Panel finds that Respondent registered what he knew to be an increasingly valuable Domain Name and likely decided to hold it until a lucrative offer to buy it came his way or until he could figure out a way to exploit it for gain.  On the record here, the Panel concludes, in the words of the Telstra panel, that “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.”

“Finally, the Panel must address Respondent’s argument that this Complaint should fail under the doctrine of laches.  ”

“Essentially, laches is an equitable time-bar to stale claims, and is designed to discourage parties from sleeping on their rights.  A laches defense generally requires not only an unreasonably lengthy delay by the party asserting the claim, but also requires a showing that the defending party suffered prejudice as a result of the delay.  This Panelist believes that laches can be a viable defense under the Policy in appropriate and limited circumstances.”

“However, laches does not apply here because there is no evidence that Complainant’s delay in bringing this case caused any prejudice to Respondent.”

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.

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.info> be transferred to Complainant.