By Hoh Jerick
Since its launch in 2004, Facebook has become the world leading social network service provider with its easily accessible functions which attracted the old and the new generations to come. As such, who doesn’t know Facebook?
For a broadly used medium of interaction, one cannot deny the possibility of its name (Facebook) to be used or appropriated by another with or without bad intentions. However, disregarding good or bad intentions, such actions carried out would inevitably tarnish the name of a brand such as Facebook. In the case between Facebook Inc. (Facebook) v. e-Web Solutions (e-Web), a dispute arose concerning the domain names <facebook.my> and <facebook.com.my> (the disputed domain names) which was registered by e-Web in Malaysia.
Facebook submitted its complaint with the Kuala Lumpur Regional Centre for Arbitration on March 23rd, 2016 in respect of the above-disputed domain name and contended that the registration of the domain names should be transferred to Facebook for being identical. Furthermore, Facebook claims that by registering the domain names, e-Web had denied Facebook’s goodwill and renown trade name to misappropriate for itself such goodwill and prestige, hence the possibility of severely damaging Facebook’s business as well. In addition, e-Web had previously registered other domain names which entailed a number of domain name dispute resolution proceedings against e-Web.
In the realm of the internet, it may be impossible sometimes for an internet user, not to type a word on the search bar and get a list of searches which contradicts what the user is searching for, as the user will usually type a keyword in hopes of getting the website as intended. In such circumstances, e-Web’s registration of the domain names may lead to much confusion among the world wide web users within Malaysia in terms of internet traffic. This is a definite concern for Facebook as a globally known network service provider.
Albeit the country code top-level domain (ccTLD), such as “.com.my” or “.my” is generally irrelevant when making a search on the web, the panel had decided that the term “Facebook” will mislead the internet users into a mass of undesired information which may possibly carry malicious contents or spread corrupting malware. As the term “Facebook” is coined by the founders of Facebook, it is thus, not a generic and common word to be found in a dictionary, as such the disputed domain name is identical to that of Facebook.
In reference to the case of eBay Inc. v. Sunho Hong, it was held that actual or constructive knowledge of Facebook’s rights in the trademark of the trade name is a factor supporting bad faith. With a trade name such as Facebook which has its establishment as a trademark in its existence since 2004 and was publicly known by 2007, it seems hard to believe that a notion of its establishment was not in mind when considering a domain name to be used in the point of business.
With no response or evidence submitted by e-Web to provide an explanation or argument for their endeavours , the panel had decided that e-Web had registered with the intention to use the disputed domain names in bad faith, as such, directed that both domain names <facebook.my> and <facebook.com.my> be transferred back to Facebook.
It must be kept in mind that a brand which has extended to its peak of popularity will nevertheless attract unwanted prospects of mischief among those who happened to stumble upon an opportunity to gain unlawfully. However, the more well-known a brand is, the more protective rights the brand acquires under trademark laws. Such is necessary taking into account how the world wide web can be a potential playground for the unruly.
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