Conversations with Facebook legal

This is a log of my “conversations” with Facebook’s legal department, and by extencion my current hosting solution, over my ownership of the domain name facebookportrait.com

From: “Legal Department” <legal@bluehost.com>
Date: Sep 11, 2015 6:00 PM
Subject: Re: [#RRH-91754–138] Notice of Trademark Abuse — facebookportrait.com [Case #449053]
To: <dimaBKUP@gmail.com>
Cc:

Hello,

Thank you for contacting the Legal Department.

Removing all content from the domain does resolve the issue.

Please feel free to contact us again if we can be of further assistance.

Legal Department
560 E Timpanogos Parkway
Orem, UT 84097
F: 801–765–1992

From: “Dmitry Strakovsky” <dimabkup@gmail.com>
Date: Sep 10, 2015 7:59 PM
Subject: Re: [#RRH-91754–138] Notice of Trademark Abuse — 
facebookportrait.com [Case #449053]
To: “Legal Department” <
legal@bluehost.com>
Cc:

I disabled the facebookportrait.com domain. Please advise if this resolves the current case. I will take up the issue of domain ownership with Facebook directly.

From: “Legal Department” <legal@bluehost.com>
Date: Sep 10, 2015 12:37 PM
Subject: Re: [#RRH-91754–138] Notice of Trademark Abuse — facebookportrait.com [Case #449053]
To: <dimaBKUP@gmail.com>
Cc:

Hello,

Thank you for contacting the Legal Department.

Unfortunately, we are not able to make determinations as to the validity
of a Trademark notice. If the notice is properly submitted, we are required
by US Federal law to take action. The notice was properly submitted.

Alternately, you or your client could contact the claimant to resolve the
matter directly — we would not be required to take any action if the
claimant contacts us to withdraw their claim after any such conversation.

Please note that nothing in this message should be considered legal
advice. We recommend that you or your client contact an attorney to further
discuss your options.

Please feel free to contact us again if we can be of further assistance.

Legal Department
560 E Timpanogos Parkway
Orem, UT 84097
F: 801–765–1992

From: “Dmitry Strakovsky” <dimabkup@gmail.com>
Date: Sep 9, 2015 7:10 PM
Subject: Re: Fwd: Notice of Trademark Abuse — 
facebookportrait.com [Case #449053]
To: “Legal Department” <
legal@bluehost.com>
Cc:

Please advise as to the path to challenge the alleged infringement as I strongly believe Facebook corporation is interpreting their rights as trademark owners in a very aggressive way, which blocks a wider public conversation about social media in general and their service in particular.

Best,

Dmitry “Dima” Strakovsky

From: “Legal Department” <legal@bluehost.com>
Date: Sep 9, 2015 2:13 PM
Subject: Fwd: Notice of Trademark Abuse — facebookportrait.com [Case #449053]
To: <dimaBKUP@gmail.com>
Cc:

Please be advised that we have received notice (copy below) of alleged
infringement on your website. Please remove or disable access to the
alleged infringing material within two business days, and provide written
notice to us to that effect when completed.

Failure to eliminate or disable access to such alleged infringing material
within such time period could result in suspension or termination of your
website.

Should you have further questions, please contact us.

Thank You,
Legal Team

NOTICE TO COMPLAINING PARTY: Please review the above web site after the expiration of the notice period, and notify us in the event you
determine that the alleged infringing material has not been eliminated or
that access to it has not been disabled, and we will take further action.

REPORT: — — — - — — Forwarded message — —
Subject: Notice of Trademark Abuse — facebookportrait.com [Case #449053]
From: name_redacted@mm-facebook.com
Date: Wed, 2 Sep 2015 10:41:33 -0700 (PDT)
To: abuse@unifiedlayer.com

02-Sep-2015
To Whom It May Concern:
We write on behalf of Facebook, Inc. regarding the hosting and use of the domain namefacebookportrait.com, which contains the famous Facebook trademark. The registrant has used your services to host facebookportrait.com at 66.147.244.97.
Trademark: Facebook
Country: United States
Registered: July 25, 2006
Application or Registration No.: 3122052
Word, Design, or Word & Design: Word
Owner Name and Address:
Facebook, Inc. (Delaware Corporation)
1601 Willow Road
Menlo Park, CA 94025
United States of America
Unauthorized use of the Facebook mark, such as facebookportrait.com, will inevitably cause confusion as to whether the domain and underlying use are authorized, endorsed, or sponsored by Facebook when, in fact, they are not. Facebook has an obligation to its users and the public to police against the registration and use of domain names that may cause such consumer confusion.
I have a good faith belief that use of the trademarks in the domain as described above are not authorized by the trademark owner or its agent, nor is such use otherwise permissible under law. Use of the content is not defensible. We have reached out to the registrant with no response or compliance. Please disable or suspend the domain immediately and we will hereby remove you from any legal action that may be taken in the future.
I represent, under penalty of perjury, that the information in this notification is true and correct, and that I am authorized to act on behalf of the trademark owner, Facebook, Inc.
Please let us know if you need any additional information.
Sincerely,
Name Redacted
Domain Name Manager, Facebook, Inc.
1601 Willow Road
Menlo Park, CA 94025
United States of America

From: <enforcement@mm-facebook.com>
Date: Mar 9, 2015 6:23 PM
Subject: facebookportrait.com — 2nd Notice of Facebook Trademark Infringement [Case #410199]
To: <DIMABKUP@gmail.com>
Cc:

To Whom It May Concern:

We write regarding your registration and use of the domain name facebookportrait.com, which contains the famous Facebook trademark.

As you know, Facebook is the leading online social network, available at www.facebook.com and on mobile devices. Facebook has used the Facebook trademark in connection with its social networking services since 2004. The Facebook trademark is registered in the United States and internationally, and is one of the most famous trademarks on the Internet. As we hope you can appreciate, protection of its trademarks is very important to Facebook.

We were concerned when we learned of your registration and use of facebookportrait.com. Specifically, your unauthorized use of the Facebook name is likely to cause confusion as to whether you or your company’s activities are authorized, endorsed, or sponsored by Facebook when, in fact, they are not. While Facebook respects your right of expression and your desire to conduct business on the Internet, Facebook must enforce its own rights in order to protect its valuable and famous trademark.

We recognize that you may not be aware of the laws that apply to trademarks and domain names. Registration and use of domains can violate the Lanham Act (15 U.S.C. 1051 and the following sections) if they infringe or are likely to dilute a trademark. Infringement occurs when a third party’s use of a company’s trademark (or a confusingly similar variation thereof) is likely to confuse consumers as to the affiliation, sponsorship or endorsement of the third party’s services. Trademark dilution occurs when a third party’s use of a variation of a company’s trademark is likely to lessen the distinctiveness of the company’s famous trademark. Registration and use of a domain name containing another’s trademark can also violate the Anticybersquatting Consumer Protection Act, and may be subject to transfer under the Uniform Domain-Name Dispute-Resolution Policy.

As a responsible trademark owner, where necessary we have filed proceedings in the relevant courts and also before the United Nation’s World Intellectual Property Organization’s arbitration panel to prevent the unauthorized use of our trademarks in domains. In these proceedings, the Facebook trademark has been found to be famous and to be entitled to broad protection.

To avoid consumer confusion and harm to the Facebook brand, we must insist that you stop using the name and domain facebookportrait.com and disable any site available at that address. You should not sell, offer to sell, or transfer the domain name to a third party and should let the domain registration expire.

You are of course welcome to explain on a replacement website that your product works with the Facebook Platform, or relates to the Facebook service, so long as that statement is fair and accurate, and does not falsely suggest that Facebook endorses you or your product. For more information on how to properly refer to Facebook, please visit our brand resource center at www.facebookbrand.com. For specific guidelines for developers, see https://developers.facebook.com/docs/guides/policy/examples_and_explanations/branding/.

Please confirm in writing that you will agree to resolve this matter as requested. We appreciate your cooperation.

Sincerely,
Ethel

Legal Dept.
Facebook, Inc.

From: <enforcement@mm-facebook.com>
Date: Feb 23, 2015 2:16 PM
Subject: RE:Re: facebookportrait.com — Notice of Facebook Trademark Infringement [Case #406492]
To: <DIMABKUP@gmail.com>
Cc:

Hello Dima,

Thank you for your response. You would have been well served to consult with an intellectual property attorney to determine if the use of Facebook would be considered infringement prior to registering a domain name. As a famous trademark Facebook enjoys broad rights in the marks globally, and your domain is in violation of the Lanham Act (15 U.S.C. 1051 and the following sections). Most Registrars include a section in their terms of services in which you agree not to infringe upon registered trademarks. If you are a member of Facebook you have also agreed to our terms of service, and reviewing the SRR is recommended — https://www.facebook.com/legal/terms.

We reiterate our request, please disable the domain name so that it no longer resolves. You are welcome to utilize a different domain for your commentary on the social performance, but please ensure it does not contain our trademark.

Regards,

Ethel
Legal Dept.
Facebook, Inc.

From: DIMABKUP@GMAIL.COM
Sent: 21 Feb 2015 08:13 AM
To:
enforcement@mm-facebook.com
Subject: Re:
facebookportrait.com — Notice of Facebook Trademark Infringement [Case #406492]

Dear Ethel,

I understand the position of the Facebook Legal Department but I have to respectfully disagree.

facebookportrait.com is an artwork. It is freely available. It presents a commentary on the social performance we the users engage in within the realms of social networks.

It is impossible to justify the claim that “use of the Facebook name is likely to cause confusion as to whether you or your company’s activities are authorized, endorsed, or sponsored by Facebook” since the overall site design is intentionally removed from any design conventions present on social networks in general and Facebook in particular. The connection is made to a personal brand established through a specific user’s activities on Facebook social network: her/his likes and the photos s/he was tagged in. This personal brand belongs to a specific individual and not to any outside corporate or private entity.

The title is a functional extension of the fact that the artwork uses Facebook API to present viewers/users activities on your social network back to them in an aggregated fashion. Facebook is the largest social network and thus becomes a standin for all social networks that track users’ activities, and archive traces of such activity present in today’s internet ecosystem. My aim is to create a healthy conversation around practices of self-imagination in the contemporary mediasphere and not to make profit from association with the Facebook brand.

I very much appreciate your time and understanding in this matter.

Sincerely,

Dmitry “Dima” Strakovsky

On Wed, Feb 18, 2015 at 6:15 PM, <enforcement@mm-facebook.com> wrote:

To Whom It May Concern:

We write regarding your registration and use of the domain name facebookportrait.com, which contains the famous Facebook trademark.
As you know, Facebook is the leading online social network, available at www.facebook.com and on mobile devices. Facebook has used the Facebook trademark in connection with its social networking services since 2004. The Facebook trademark is registered in the United States and internationally, and is one of the most famous trademarks on the Internet. As we hope you can appreciate, protection of its trademarks is very important to Facebook.
We were concerned when we learned of your registration and use of facebookportrait.com. Specifically, your unauthorized use of the Facebook name is likely to cause confusion as to whether you or your company’s activities are authorized, endorsed, or sponsored by Facebook when, in fact, they are not. While Facebook respects your right of expression and your desire to conduct business on the Internet, Facebook must enforce its own rights in order to protect its valuable and famous trademark.
We recognize that you may not be aware of the laws that apply to trademarks and domain names. Registration and use of domains can violate the Lanham Act (15 U.S.C. 1051 and the following sections) if they infringe or are likely to dilute a trademark. Infringement occurs when a third party’s use of a company’s trademark (or a confusingly similar variation thereof) is likely to confuse consumers as to the affiliation, sponsorship or endorsement of the third party’s services. Trademark dilution occurs when a third party’s use of a variation of a company’s trademark is likely to lessen the distinctiveness of the company’s famous trademark. Registration and use of a domain name containing another’s trademark can also violate the Anticybersquatting Consumer Protection Act, and may be subject to transfer under the Uniform Domain-Name Dispute-Resolution Policy.
As a responsible trademark owner, where necessary we have filed proceedings in the relevant courts and also before the United Nation’s World Intellectual Property Organization’s arbitration panel to prevent the unauthorized use of our trademarks in domains. In these proceedings, the Facebook trademark has been found to be famous and to be entitled to broad protection.
To avoid consumer confusion and harm to the Facebook brand, we must insist that you stop using the name and domain facebookportrait.com and disable any site available at that address. You should not sell, offer to sell, or transfer the domain name to a third party and should let the domain registration expire.
You are of course welcome to explain on a replacement website that your product works with the Facebook Platform, or relates to the Facebook service, so long as that statement is fair and accurate, and does not falsely suggest that Facebook endorses you or your product. For more information on how to properly refer to Facebook, please visit our brand resource center atwww.facebookbrand.com. For specific guidelines for developers, see https://developers.facebook.com/docs/guides/policy/examples_and_explanations/branding/.
Please confirm in writing that you will agree to resolve this matter as requested. We appreciate your cooperation.
Sincerely,
Ethel
Legal Dept.
Facebook, Inc.