united-states intellectual-property international trademark
I just got a facebook trademark infringement notice by email from Meta
<p>I am the owner of <a href="https://*******onfacebook.com" rel="nofollow noreferrer">https://*******onfacebook.com</a> . Its a free tool to find mutual friends between two or more people.</p>
<p>I made a facebook account to promote this website on many FB groups about mutual friends. The account got blocked because i had spammed too many different FB groups. Then i made the mistake of appealing the block using the same phone number that's connected to my regular facebook account, so now they know my first and last name as well... Shortly after this F*ck-up I received the following email in the inbox of my normal email address.</p>
<blockquote>
<p>To Whom It May Concern:</p>
<p>We are writing concerning your registration and use of the domain name
*******onfacebook.com, which contains the famous Facebook
trademark.</p>
<p>As you undoubtedly know, Facebook is the leading online social network
service. Meta Platforms, Inc. (“Meta”), previously Facebook, Inc.,
adopted the name and trademark Facebook in February 2004 and, since
that time, has actively used the Facebook name and trademark in
connection with its online social network service, including
maintaining the web site <a href="http://www.facebook.com" rel="nofollow noreferrer">www.facebook.com</a>. The term Facebook is one of
the most famous trademarks on the Internet. Meta owns exclusive
trademark rights to the Facebook name as a result of numerous
trademark registrations in the United States and internationally, as
well as related common law rights. Accordingly, Meta enjoys broad
trademark rights in the name Facebook.</p>
<p>Meta has made a substantial investment in developing and providing its
services. As a result of its pioneering efforts and devoting
substantial effort and resources to providing only high quality
services, the Facebook name and trademarks are widely known among the
consuming public worldwide, and the name and trademarks embody
substantial and valuable goodwill.</p>
<p>Accordingly, we were concerned when we learned of the registration and
use of ******onfacebook.com. As we hope you can appreciate,
protection of its trademarks is very important to us. The registration
and use of [[domain_name]] violate the Lanham Act (15 U.S.C. 1051 et
seq.) because it infringes and dilutes the famous Facebook trademark.</p>
<p>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.</p>
<p>We have filed numerous proceedings before the United Nation's World
Intellectual Property Organization's arbitration panel in order to
protect our rights, and have recovered thousands of domain names. We
are concerned that registrant’s unauthorized use of the Facebook name
may cause confusion as to whether registrant or registrant’s company’s
activities are authorized, endorsed or sponsored by Meta when, in
fact, they are not.</p>
<p>We understand that you may have registered
*********onfacebook.com without full knowledge of the law in
this area. However, we are concerned about your use of the Facebook
trademark in the domain name. As you may know, the Anticybersquatting
Consumer Protection Act provides for serious penalties (up to $100,000
per domain name) against persons who, without authorization, use,
sell, or offer for sale a domain name that infringes another’s
trademark.</p>
<p>While Meta respects your right of expression and desire to conduct
business on the Internet, Meta must enforce its own rights in order to
protect its valuable and famous trademark. For these reasons, and to
avoid consumer confusion, Meta must insist that you immediately stop
using ********onfacebook.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.</p>
<p>The domain name, *******onfacebook.com, is currently
resolving to a parked page, pay-per-click advertising, sponsored links
or other unauthorized use. Please disable the servers so they do not
connect to a page with content.</p>
<p>Please confirm in writing that you will agree to resolve this matter
as requested.</p>
<p>Sincerely,</p>
<p>Meta IP &amp; DNS Enforcement Group Legal Dept. Meta Platforms, Inc.</p>
<p>_Any personal data collected by Appdetex and used to identify individuals for the purpose of this communication have been done in
accordance with applicable privacy laws and the Appdetex Privacy
Policy available at: <a href="https://www.appdetex.com/legal/privacy-policy" rel="nofollow noreferrer">https://www.appdetex.com/legal/privacy-policy</a>.</p>
<p>Certain information provided herein may be confidential and/or
protected from disclosure under applicable law. If you are not the
intended recipient of this transmission, please notify the sender
immediately and do not deliver, distribute or copy this transmission,
disclose its contents, or take any other action in reliance upon or as
a result of the information it contains._</p>
</blockquote>
<p>I am <strong>not</strong> diluting their trademark and am <strong>not</strong> claiming affiliation with Meta or Facebook. There is a disclaimer on the website that says that the trademark is used <strong>nominatively</strong> only. Just as the website <a href="http://www.twittervideodownloader.com" rel="nofollow noreferrer">www.twittervideodownloader.com</a> is using the trademark Twitter nominatively as well. That website is still up, so what's wrong with mine?</p>
<p>I used the answer <a href="https://law.stackexchange.com/questions/79352/am-i-allowed-to-use-the-term-facebook-as-a-keyword-in-the-head-section-of-my">from this lawexchange post</a> to create the disclaimer. The subject of the email i received is <code>Privacy Forward - [from:enf.facebook.1******@ad-facebook.com] *******onfacebook.com - Notice of Facebook Trademark Infringement</code>. The email originates from <code>***********@identity-protect.org</code>.</p>
<p>What should i do? Do they really have something on me? They're saying i'm violating the Lanham Act (15 U.S.C. 1051 et seq.) because i'm diluting the trademark Facebook. But how am i diluting their trademark? The site hosts nothing more but a free tool. They are also saying that *The domain name, ********<em>onfacebook.com, is currently resolving to a parked page, pay-per-click advertising, sponsored links or other unauthorized use.</em>. This is again not true. It resolves to an angular app for determining mutual friends between two or more facebook users online. It currently does not show any advertisements either.</p>
<p>The content also looks like a standard template because they forgot to replace <code>[[domain_name]]</code> in the phrase <code>The registration and use of [[domain_name]]</code> with the url https://*****onfacebook.com . It could very well be that they didn't even bother to read my disclaimer.</p>
<p>What should i do? Do they really have legitimate grounds to sue me? I must add that i reside in the Netherlands so the website <a href="https://*******onfacebook.com" rel="nofollow noreferrer">https://*********onfacebook.com</a> is not subject to US law.
Can they file a case against me even when there is no ground to do so at all?</p>

<p>Since your website operates in the US (regardless of where you live), it is subject to US law, so you can be sued in the US. Also in The Netherlands: there is a non-trivial chance that the parent corporation registered their trademark in The Netherlands (and anywhere else they operate). Your domain name could be cancelled by ICANN as a result of a court proceeding in either country.</p>
<p>You should consult with an attorney, if you want to fight this. In court, you could try to argue that your use of their trademark does not violate trademark law, and you might read <a href="https://www.nolo.com/legal-encyclopedia/avoid-trademark-infringement-domain-name-29032.html" rel="nofollow noreferrer">this</a> in preparation. <a href="https://uk.practicallaw.thomsonreuters.com/w-010-5573?transitionType=Default&amp;contextData=(sc.Default)&amp;firstPage=true" rel="nofollow noreferrer">This article</a> gives an overview of trademark litigation in The Netherlands, and §9 explains how infringement is assessed.</p>
