How Facebook ‘liberated’ its Israeli namesake

One of the biggest annoyances for owners of brand names in the Internet age is “cybersquatting” — the hijacking of a name with a similar spelling or a different suffix than the primary site used by the brand name as its main web address. Brand owners often have to fight a running battle to ensure that they retain rights to their name. Fortunately for them, they have some help — in the form of an arbitration process that ensures that brand owners aren’t the victims of online “identity theft.”

Like any other big business, Facebook has spawned a whole industry of add-ons, affiliated apps, and hangers-on, all hoping to make a buck off the “mothership’s” success. To that latter category of hangers-on one can add cybersquatters, who attempt to hijack Facebook domain names in various countries, “parking” them or actually using them for a blog or other content — in the hope that they can make a deal with the parent company, which, interested as it is in protecting its copyright and intellectual property, might be willing to buy out the domain name holder.

While they wait for their deal, cybersquatters will often put ads on their sites, hoping to make money from the clickthroughs of people who ended up there accidentally while searching for the “real” site.

That is apparently what happened when an Israeli lawyer registered the domain name Facebook.co.il, holding on to it for several years, and even offering to sell it to Facebook — until the social networking site appealed to Israel’s domain name “justice” system, and got the name back, without having to pay a shekel.

Many companies make it a priority to buy up the “primary” domain suffixes for their brand name, like .com, .net., and .org. But it’s almost impossible (or soon will be) to register a trademarked or copyrighted brand in all the top-level domains. Currently, there are 26 of them, but that number is set to expand radically in the coming year, as ICANN, the company that authorizes domain names, has opened applications for custom suffixes (like .corp, .mba, .weather, .ford, and many others). There are over 2,500 applications pending — and that doesn’t even include the permutations of names that many cybersquatters grab as well (like facebooke.com, currently not owned by Facebook).

What can a brand owner do? In most countries there is an arbitration process, where the brand owner can appeal to that country’s Internet authorities, as well as a legal process, in which a brand owner takes a cybersquatter to court, usually for damages, or if the arbitration process fails. The Israeli arbitration/legal response consists of appealing to the IL-DRP (Israel Domain Name Dispute Resolution Policy), operated by the Israel Internet Society (ISOC-IL). Arbitration by the group is binding on all domain name owners, and the group, which acts on complaints of domain name infringement, will pull a site with a domain name that it finds was registered with malice aforethought (i.e. cybersquatting). Domain name owners who are dissatisfied with the decision can take their case to court, where laws on reputation damage are used to adjudicate cybersquatting cases.

The Israeli system closely mirrors the process in the US, where ICANN arbitrates disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP). If a complainant so wishes, they can initiate legal proceedings under the Anticybersquatting Consumer Protection Act (ACPA). IL-DRP has handled dozens of cases, such as Kindlefire.co.il (Amazon Technologies, Inc. vs. Yonathan Cohen), Ktav.co.il (Ktav Publishing House, Inc. v. Moshe Menasheof), Wikipedia.co.il (Wikimedia Foundation Inc. v. Oren Shatz), Gap.co.il (Gap Inc. and Gap (ITM) Inc. v. David Rahamim), and even Palmolive.co.il, with “Palmolive” written in Hebrew letters. Although Hebrew language domain names have not yet been approved, it’s expected they eventually will be — and the Colgate-Palmolive company wants to be ready when the time comes.

In each of these cases, IL-DRP awarded the domain name to the well-known brand, except for Ktav.co.il, since the site using that domain name in Israel is a well-known Israeli publishing house.

Which brings us to the case of Facebook.co.il — a dispute ISOC ruled on just recently. Facebook complained that the use of the Israeli version of its copyrighted name was damaging to its business. According to the IL-DRP decision, “the Petitioner (Facebook) owns over 100 domain names consisting of the term ‘facebook,’ in different countries and different languages. Given the exclusively online nature of the Petitioner’s services, the Petitioner’s domain names, consisting of the term Facebook, are essential to its existence, and are the sole means by which millions of users partake of its services.” Based on the fact that the disputed domain name is “is identical with Petitioner’s trademark” and that it holds “rights in the name,” as opposed to the Israeli owner of Facebook.co.il, which “has no rights in the name,” and is using the name “in bad faith,” Facebook asked IL-DRP to award it the domain.

But perhaps the Israeli owner of the site had a legitimate use for the Facebook name? No way, said IL-DRP. “The Respondent (current site owner) is a private citizen, lawyer by profession, who has no association whatsoever with the Petitioner or its products, and is in no way an authorized dealer, distributor, or licensee of the Petitioner.” Not only that: “The website under the Disputed Domain consists of reference to four, non-related charitable organizations. None of the Organizations have any association or connection with the term ‘Facebook’ (It is not even clear what relation they have to the Respondent).”

While the site has no apparent connection to Facebook, IL-DRP said, a check of the Internet Wayback Machine indicates that in the past, the site did indeed have Facebook logos — meaning that the site owner was not only cybersquatting, but also trying to build up site traffic as part of a deal he hoped to make with Facebook. “In previous communication between the Petitioner and the Holder, the Holder agreed to sell the Name, only for a substantial sum. This behavior clearly indicate that the holder has no interest in the Domain itself, thus indicating lack of rights to the Name.”

In what turned out to be an open and shut case, IL-DRP awarded Facebook the Israeli domain site. However, since ISOC gives site owners at least 30 days to vacate domain names and find substitutes, the Israeli Facebook site is still up, with blogs and links to the four charitable groups described in the case. The site does make it clear, though, that it is not affiliated with the “real” Facebook — and helpfully provides a link to Facebook.com for those who come to the site in error. It’s unlikely that the site owner is getting paid for those clickthroughs, though.