Facebook wins transfer of dozen allegedly faux ‘Facebook’ domains (WIPO)

March 3, 2014

Practitioner Insights thumbnail 2(Editor’s Note: This post is an excerpt from an article appearing in Practitioner Insights on WestlawNext)

The World Intellectual Property Organization recently awarded Facebook Inc. ownership of 12 domain names belonging to several registrants, deeming each of the domains confusingly similar to the “Facebook” trademark.

Facebook Inc. v. Lee et al., No. D2013-2030, 2014 WL 690742 (WIPO Arb. Feb. 6, 2014).

Slight misspellings of “Facebook,” the addition of country code and generic suffixes to “Facebook,” and the addition of generic terms to “Facebook” did not differentiate the disputed domain names from the social media giant’s trademark, the WIPO Arbitration and Mediation Center ruled.

Menlo Park, Calif.-based Facebook operates online social networking services through facebook.com, owns international trademark registrations for “Facebook” and has acquired “considerable” goodwill and renown worldwide, the opinion said.

Respondents Seung Hee Lee, Jung Hyun Shin and Master Inc., all of San Diego, and Sang Hoon Lee of Seoul, South Korea, did not submit responses to the complaint, according to the opinion.

The domain names were registered between September 2010 and January 2013, the opinion said.

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