Recently Facebook has sued a local company named A1 Software Limited who happened to be the owner of the dot bd domain name of Facebook. A1 Software Limited has an open offer to sell the domain for US$ 6 million, which is equivalent to about TK50 crore. In response, Facebook is about to sue the domain registrant for US$ 50,000, equivalent to Tk42 lac as compensation for violating their trademark rights.
A top-level domain (TLD) is the last part of the web address, which usually represents the type of organisation or the country where the organisation is located. In this situation, dot bd denotes an organisation located in Bangladesh. Although ethically it may not be right to grab another company's local domain, it is a well-known business model called domain parking business.
Interestingly, since Facebook doesn't have an office in Bangladesh, it is not a registered company in Bangladesh. On the other hand, according to the lawyer of this case, the term 'Facebook' is a trademark in Bangladesh. To get a better understanding of this situation, we have to have a look at what the law says about the registration of a trademark in Bangladesh to determine whether the internet giant will find a legal solution or not. It an important issue, because if Facebook wins, it will be a milestone case for trademark law in Bangladesh.
Suing a company for buying and holding a domain name has legal complexities. A foreign company can register a trademark in Bangladesh but the company must have an address for service as stated in section 15(4) of the Trademark Act, 2009. It is unclear whether Facebook has an office address in Bangladesh or not. Another legal provision before registering a trademark is that an advertisement has to be published stating the acceptance of the application as mentioned in section 17 of the Trademark Act, 2009. In this regard, questions can be raised about whether Facebook published any such advertisement or not.
The name "Facebook" belongs to Facebook Incorporated. Facebook had filed a trademark application for it to the U.S. Patent and Trademark Office (USPTO) on July 14, 2008, and received it on December 13, 2014. Bangladesh Telecommunication Company Limited, the organisation that provides dot bd domains, mentions in its domain information page that "facebook.com.bd" was registered on December 7, 2008. This means that the domain was purchased long before Facebook Incorporated even got its trademark registered from U.S. Patent and Trademark Office.
There is another problem Facebook has to deal with to successfully sue A1 Software Limited. Specifically, Section 86 of the Trademark Act, 2009 talks about the time limit of filing a case. It says that no case for an offence under this legislation can be started three years after the commission of the offence charged or two years after the detection thereof by the applicant, whichever comes first.
If buying and holding a domain name is an offence that violates a trademark right, this offence occurred 12 years ago. Thus, It will be a challenge for Facebook to argue and defend their case about why they are claiming the trademark right beyond the time allowed in the law of Bangladesh. Facebook has claimed they noticed this issue in 2016 (they sued four years after detecting the offence), which is still beyond the allowed time limit to file a case under this law.
Strong arguments for Facebook in this situation can be found from case laws. There are very few case laws about domain names that concern intellectual property laws. For example, in the case of Tata Sons Limited vs. Manu Kosuri & Others (2001), the plaintiff owned the TATA trademark since the year 1917. The defendant purchased several domain names that contained the name "TATA". The plaintiff later won the case with a permanent injunction passed in favour of TATA. The court recognised that Internet domain names are of importance, can be precious corporate assets that are more than an Internet address and are entitled to protection in the same way as a trademark.
With the advancement and progress in technology, the services rendered by a website have to be recognised, accepted and given protection from passing off.
The incident of Bangladesh is unique because, firstly, A1 Software purchased the domain before Facebook got the trademark registration. Secondly, the local domain of Facebook is not providing any service at all, which means the principle underlying the tort of passing off will not be applicable here. In the case of Perry v Truefitt, it was held that "A man cannot sell his products with the misrepresentation that they are the goods of another man".
To conclude, domain names are important enterprise assets. It is the primary identification of an organisation or business that does business over the internet. Holding up a domain and reselling it is not a new business.
A1 Software did not commit any crime as they are not misrepresenting anything of similar product or service of Facebook. The final result of the case will be decided by the court.
Bangladesh has never seen any such case for which the subject matter is a domain name. After this case, many companies will be aware of their intellectual property rights and trademark registration. More awareness of intellectual property will encourage us to create innovative business names, business models, and most importantly, respect the intellectual property rights of other businesses.
Saiful Bari is a student at the Department of Law and Human Rights, The University of Asia Pacific.