Facebook wins decision in cyber-squatting case

12 Jun 2008

The World Intellectual Property Organisation (WIPO) has found in social networking powerhouse Facebook’s favour against an Irish company that registered the domain Facebook.ie, siliconrepublic.com has learned.

According to a dispute resolution decision published on the IE Domain Registry website, a Dublin-based company called Talkbeans Media Limited registered the domain name Facebook.ie in February 2007 and then registered the name ‘Facebook’ as a registered business name with the Companies Registration Office in August 2007.

In December, Facebook, which includes Microsoft as an investor, filed a complaint with the WIPO Arbitration and Mediation Centre.

Facebook indicated to the sole panellist in the matter, James Bridgeman, that it launched its website in 2004 and as of 10 December last had over 156,443 users registered in the ‘Ireland’ section of its network.

Facebook’s website address – Facebook.com – the social networker said, was the seventh most visited website in Ireland. Worldwide, Facebook says it has over 57 million active users.

Facebook, represented by solicitors Lovells of France, found that Talkbeans had no Irish, EU or international trademark rights to the term ‘Facebook’ and said the fact that Talkbeans had ‘Facebook’ registered as a business name was not sufficient to entitle it to the name. Facebook also pointed out that Talkbeans registered ‘Facebook’ as a business name with the CRO six months after it had registered the domain address.

Facebook’s solicitors claimed the use of the site Facebook.ie created confusion and suggested Talkbeans registered the domain name to take advantage of its reputation.

After receiving ‘cease and desist’ correspondence from Facebook’s solicitors, Talkbeans agreed to stop using the domain name. However, shortly afterwards it arranged for the domain name to go to a site which displayed the words ‘Facebook Beauty Clinic, Shankill, Co Dublin – Coming Soon’. By November, the domain redirected visitors to the www.talkbeans.ie web address, which was providing social networking services.

As far as Facebook was concerned, this established Talkbeans as a competitor.

Talkbeans, through its solicitors LK Shields responded that it no longer wanted the Facebook.ie domain and consented to its transfer without any admission of liability.

The company denied it was attempting to pass itself off as Facebook and as of 15 December notified the IEDR of its cessation of ownership of the domain Facebook.ie.

In his decision, Bridgeman decided that Facebook is a “distinctive, coined word” and said it was more than probable that the registrant of Facebook.ie – Talkbeans Media Limited – was aware of Facebook at the time.

He said it was clear the registrant registered the domain name intending to intercept internet traffic intended for Facebook and divert it to its own social networking site.

Bridgeman said also that Talkbeans was disingenuous in arranging for the site to divert to the Facebook Beauty Clinic site at a time when it was aware of the dispute.

He concluded by saying Facebook is entitled to the name Facebook.ie and ordered that it be transferred to the social networking player.

Speaking to siliconrepublic.com, the chief executive of the IEDR, David Curtin said that while the registry has stringent rules and regulations regarding the rights to securing domain names, such as providing company registration details, the onus is on companies to be vigilant.

“People can register whatever name is available on a first come, first served basis. Once someone can authenticate a claim to a name they can go ahead with registration and if the CRO issues a business name then they meet the criteria.

“The dispute resolution policy is there to allow people to challenge each other independently of the registry. WIPO mediators are very independent and make their own judgement and we agree to be bound by the outcome of that judgement.

“This case has been resolved in Facebook’s favour and within that judgement the sole panellist acknowledged that Talkbeans made an effort to transfer the domain Facebook.ie back to Facebook in December 2007 and that has now been transferred,” Curtin said.

This is not the first time a prominent social networking site has been registered with a .ie domain by people who were clearly not the owners of the name.

In 2006, domains such as police.ie, british.ie, look.ie, ipod.ie, adidas.ie, nike.ie and bebo.ie were registered by individuals known as Gabor Varga and Jozsef Petho.

On subsequent investigation, applications are pending for many of these names, except Bebo.ie, which is now registered to a certain Michael Birch, Bebo’s founder.

By John Kennedy

John Kennedy is a journalist who served as editor of Silicon Republic for 17 years