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FamousBirthdays.io: No, “famous birthdays” is not a generic phrase

So you thought “famous birthdays” is a generic phrase you can monetize via a domain such as FamousBirthdays.io?

Think again.

The mark FAMOUS BIRTHDAYS has been registered with the USPTO since 2012 and in the UDRP case of Famous Birthdays LLC vs. Rashed Hasan Akash it led to the Respondent’s loss.

The Respondent ripped content from Wikipedia, among other sources, to display content and ads. Eventually, he forwarded the domain to AllFamousBirthday.com that pretty much does the same.

Meanwhile, the Complainant shared data that their web site had 20 million unique visitors in 2019, at a time when it was covered by an article in The Atlantic. That was one strong reason for the WIPO panelist to order the domain FamousBirthdays.io to be transferred to the Complainant. They now have to pay high renewal fees to keep that junky TLD.

Famous Birthdays, LLC v. Rashed Hasan Akash d.b.a Triple A Tech / See PrivacyGuardian.org, Domain Administrator
Case No. DIO2021-0018

1. The Parties

The Complainant is Famous Birthdays, LLC, United States of America (“United States”), represented Rosen, Wolfe & Hwang, United States.

The Respondent is Rashed Hasan Akash d.b.a Triple A Tech, Bangladesh / See PrivacyGuardian.org, Domain Administrator, United States.

2. The Domain Name and Registrar

The disputed domain name <famousbirthdays.io> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Response was filed with the Center on September 23, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 29, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an American company founded in 2012. Since 2012, it has been providing a service with information about people in the entertainment industry under the name Famous Birthdays from a website to which <famousbirthdays.com> resolves.

According to the Complaint, its database includes more than 200,000 entries about celebrities and up-and-coming celebrities including in particular those on popular video channels like YouTube and TikTok. The entries are written by the Complainant’s staff and include biographical information about the subject and links to information about the person including video content.

According to an article published by The Atlantic on July 26, 2019, “Famous Birthdays has become a go-to database of teen culture—and is ushering in a whole new generation of stars”. According to the article, at that time, the Complainant’s website had 20 million unique visitors a month. An article in the New York Times, “Step Chickens and the Rise of TikTok Cults”, published on May 26, 2020, commented about Step Chickens being added to the Complainant’s database, “Famous Birthdays” – “a milestone in any influencer’s career”. An article in Paper, “Charli and Dixie Want You to be Happy”, makes a point of mentioning that “Charli is the #1 most popular person on Famous Birthdays. For what it’s worth, Dixie is #7, just behind Justin Bieber”.

On July 20, 2021, the Complainant applied to register “Famous Birthdays” as a trademark in the United States. That application is still pending and has not proceeded to registration.

The Respondent registered the disputed domain name on November 30, 2020. In January 2021, the disputed domain name began resolving to a website, “Famous Birthdays”, which provided a database of biographical information about celebrities similar to the service provided by the Complainant.

By the time this decision came to be prepared, the disputed domain name has been redirected to a website at “www.allfamousbirthday.com”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

As the Respondent points out, the Complainant’s pending trademark application does not constitute trademark rights for this purpose. Hence, it must rely on rights in an unregistered trademark.

The Respondent contends that the expression “Famous Birthdays” is a common term in the English language and generic, which cannot acquire a secondary meaning.

Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) notes that a complainant asserting rights in an unregistered or common law trademark must show that the mark has become a distinctive identifier by which the relevant public identifies the trade source of the relevant goods or services as being the complainant.1 Section 1.3 notes that:

“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)”

As noted above, the Complainant has been using its FAMOUS BIRTHDAYS trademark since its founding in 2012, i.e. almost 9 years. The Complainant has not provided evidence about its sales revenues. However, its evidence does include the report in The Atlantic, a highly reputable journal, that the Complainant’s website was attracting 20 million visitors a month in 2019. The New York Times also recognised that a listing in the Complainant’s service was highly significant for celebrities particularly in social media fields such as YouTube and Tik Tok. The Panel also notes that an online search shows that the Complainant has some 1.8 million Instagram followers and over 450,000 “likes” on Facebook.

It is also important to keep in mind that this requirement under the Policy is essentially a standing requirement to ensure that only people with a legitimate or genuine basis for a complaint can invoke the procedures under the Policy.

In these circumstances, even allowing for the descriptive nature of the expression “Famous Birthdays”, the Panel considers the Complainant has demonstrated sufficient distinctiveness in that expression as an unregistered trademark for the purposes of the Policy.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g. WIPO Overview 3.0, section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the country-code Top Level Domain (“ccTLD”) component as a functional aspect of the domain name system. See e.g., WIPO Overview 3.0, section 1.11.

Disregarding the “.io” ccTLD, the disputed domain name consists solely of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

It is not in dispute between the Parties that the Complainant has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is not derived from the Respondent’s name or what appears to be the Respondent’s trading name, Triple A Tech.

The nature of the Respondent’s use is neither noncommercial nor otherwise a “fair use” without intent for commercial gain.

Accordingly, the Complainant has established a prima facie case particularly bearing in mind the length and extent of the Complainant’s use of its trademark.

In addition to disputing whether the Complainant has acquired any reputation in FAMOUS BIRTHDAYS, the Respondent points out that common-law trademark rights are limited to the geographic area of the jurisdiction in which they are claimed. The Respondent then contends that he is neither a United States citizen nor, he claims, is he conducting a commercial business in the United States.

First, it must be noted that the Complainant’s website is accessible from all around the world. Although the Complainant has not provided figures for the extent to which its website is in fact accessed from outside the United States, the subject matter and content of the website is such that the Panel considers it very likely that a significant proportion of the 20 million monthly visitors (in 2019) and Instagram and Facebook interactions are located outside the United States.

Secondly, correspondingly, the Respondent’s website is equally accessible from all around the world. Many of the celebrities or identities on the Complainant’s website, if not all, including numerous American celebrities are also featured on the Respondent’s website. The Respondent’s website is in English and there is nothing about the website purporting to restrict its target audience to any particular geographic area outside the United States.

Accordingly, the Panel does not accept that the Complainant’s rights are restricted to the United States. Nor does the Panel accept that the Respondent is not seeking business in the United States or that people in the United States are unlikely to discover or be interested in the Respondent’s website.

In these circumstances, the Respondent is using a domain name identical to the Complainant’s trademark to provide a service competing with the Complainant’s service and which is directed to the same audience as the Complainant’s service.

Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant. Therefore, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered or Used in Bad Faith

In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. The requirements are disjunctive. It is sufficient to establish one or the other.

Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Having regard to the apparent scale and recognition of the Complainant’s service under FAMOUS BIRTHDAYS, particularly in the context of people interested in celebrities and influencers, it appears very likely that the Respondent was aware of the Complainant and its trademark when he registered the disputed domain name. The website to which the disputed domain name has resolved appears to be directed to the same audience, contains very similar subject matter and content. It also does not include any clear disclaimer of association with the Complainant and the service the Complainant offers under the trademark.

The Respondent has not denied any knowledge of the Complainant or its service. His defence was essentially that the Complainant’s rights (if any) do not extend outside the United States.

As explained above, however, the Complainant’s service and trademark are available and appear to be directed globally. Accordingly, there is no such geographical limit of the Complainant’s rights under the Policy which the Respondent contends for having regard to the nature of the Internet. Moreover, in any event, it appears that the Respondent’s website has been attempting to attract custom from the United States.

Further, the Complainant contends that iterations of the Respondent’s website have copied original copyrighted materials from the Complainant’s website. So much so that it filed a copyright notice with Google – apparently a reference to a take down notice under the Digital Millennium Copyright Act (“DMCA”). The Respondent did file a counter-notice in response.

In his Response, the Respondent contends that Wikipedia is the primary source of articles on the website and states that most of the articles on his site were previously published under a cc by-sa 3.0 licence. If that is the case, the print-outs of materials from the Respondent’s site in evidence do not include the appropriate attribution. However, the Respondent states further that, after receipt of the DMCA notice, he removed all the articles the subject of the Complainant’s DMCA complaint. This suggests, at the least, that the Respondent had sourced from the Complainant’s service some of the articles the subject of complaint and then removed them. That in turn indicates an awareness of the Complainant and its service.

These factors taken together indicate that the Respondent registered the disputed domain name with notice of the Complainant’s usage rather than developing the disputed domain name independently of the Complainant and the Complainant’s trademark.

Accordingly, the Panel finds on the record in this case that the disputed domain name has been registered in bad faith. Furthermore, the use of the disputed domain name, which is identical to the Complainant’s trademark, to provide a service in competition with the Complainant’s service without the Complainant’s permission also constitutes use in bad faith. The copying original content from the Complainant’s site, if that has occurred, compounds the bad faith,

Accordingly, the Complainant has established all three requirements under the Policy.

6. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <famousbirthdays.io>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: October 15, 2021

1 In view of the derivation of the Policy from the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel considers it appropriate to apply the understanding of the interpretation of similar terms and concepts in the context of the Policy also.


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Comments

One Response to “FamousBirthdays.io: No, “famous birthdays” is not a generic phrase”
  1. amplify says:

    Who’s going to be the bearer of bad news and tell Cars.net that they can no longer sell cars as it’s confusingly similar to the Cars.com trademark? 🤔 If I’m understanding this correctly, this is ridiculous.

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