The Complainant is Facebook, Inc. of Palo Alto, California, United States of America represented by Cooley LLP, United States of America.
The Respondent is Domain Asset Holdings of Potomac, Maryland, United States of America. 2. The Domain Names and Registrars
The disputed domain names are as follows:
The disputed domain names and are registered with GoD, Inc., and the disputed domain name is registered with Tucows Inc. The remaining disputed domain names are registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2011. On March 22, 2011, the Center transmitted by email to TierraNet d/b/a DomainDiscover, GoD, Inc., and Tucows Inc. a request for registrar verification in connection with the disputed domain names, including a request that the concerned Registrars “confirm that the domain name(s) has been or is in the process of being placed on Registrar lock, and will remain so during the course of these proceedings (pursuant to paragraph 8 of the UDRP”, and drawing attention “where applicable, for ICANN-accredited registrars reference is also made to paragraph 3.7.5.7. of the ICANN Expired Domain Deletion Policy, at )”. On March 22, 2011, TierraNet d/b/a DomainDiscover and Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information. In particular, TierraNet d/b/a DomainDiscover confirmed the registrant details and indicated that the disputed domain names “have been administratively locked and will remain locked for the duration of the UDRP proceedings”. No further reference was made at that time TierraNet d/b/a DomainDiscover to the status of the disputed domain names. On March 23, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on April 20, 2011. 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.
On May 13, 2011, the WIPO Center became aware from the public WhoIs that all disputed domain names registered with TierraNet d/b/a DomainDiscover carried the status “redemptionPeriod”. On that date the WIPO Center requested TierraNet d/b/a DomainDiscover by phone and email to confirm the status of the disputed domain names, including the registrar’s previous confirmation of lock, querying whether the domain names had been deleted, and again making reference to paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy which provides, inter alia, that “[i]n the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”. In its communication, the WIPO Center requested TierraNet d/b/a DomainDiscover to confirm that the domain names were placed and would remain in Registrar LOCK status for the duration of the UDRP proceedings, and requested TierraNet d/b/a DomainDiscover to indicate whether any action would be required by the Parties to keep the domain names under Registrar LOCK so that the administrative procedure could continue as required under the UDRP.
On May 16, 2011, TierraNet d/b/a DomainDiscover replied to the WIPO Center’s email request of May 13, 2011 as follows:
“Thank you for your patience. My apologies for the delay. I would like to confirm that the legal counsel for the owner of these names had advised that the domains be deleted prior to the UDRP process. We had proceeded with their request.”
Upon receipt of the above email, the WIPO Center again on May 16, 2011 requested that TierraNet d/b/a DomainDiscover confirm that the domain names would remain in Registrar LOCK and whether any action is required by the Complainant to keep the domain names active.
On May 16, 2011, TierraNet d/b/a DomainDiscover responded with the following:
“Thank you again for your email. Because the domains were deleted before the process of UDRP began, there will not be an ability to lock and hold the domains at this time. The complainant, however, will have the option to register the domains once the registry releases them. Again, please note that the domains were deleted prior to the UDRP.”
On May 17, 2011, all disputed domain names registered with TierraNet d/b/a DomainDiscover appeared from the public WhoIs to be in “pendingDelete” status, each with an updated date of May 16, 2011.
On May 17, 2011, this Panel issued Administrative Panel Procedural Order No. 1, requesting TierraNet d/b/a DomainDiscover to provide an explanation as to the circumstances of the apparent change in status of the disputed domain names registered with it, and in light of its own confirmation of March 22, 2011, how it could be that the relevant disputed domain names could be regarded as having been deleted prior to the UDRP procedure which was commenced, following its own verification, on March 24, 2011. TierraNet d/b/a DomainDiscover was also requested to confirm to the extent possible that the relevant registration information and active domain name status had been restored for the relevant disputed domain names, and that they be placed in and remain under Registrar LOCK until the conclusion of these proceedings. Finally, in accordance with paragraph 4(k) of the Policy, TierraNet d/b/a DomainDiscover was also requested to confirm, in accordance with its obligations, that it will in any event take appropriate steps (in consultation with the Parties and registry if necessary) to give effect to any required implementation of any duly issued UDRP Panel Decision in this matter.
Thereafter, on May 19, 2011, TierraNet d/b/a DomainDiscover responded with the following:
“Thank you for your patience. After further review, we admit to some lines crossing between the UDRP process and requests from legal counsel, causing an error on our behalf in deleting the domains. We have since been in contact with Verisign to request the restore of all domains relating to this UDRP complaint. We confirm the domains have been restored and are under proper administrative lock and will remain so until the proceedings have completed.”
In light of the above, the Panel has accordingly proceeded to render its Decision below based on TierraNet d/b/a DomainDiscover’s latest email of May 19, 2011 apparently indicating an (unexplained) mistake of some sort may have occurred, but in any event confirming that the relevant disputed domain names have (again) been locked, and are apparently confirmed as subject to the present UDRP proceedings. The Panel has for its part also confirmed that the public WhoIs data of May 24, 2011 for the disputed domain names appears to confirm the restoration of relevant registrant information, and that that the domain names are on LOCK status. The Panel will therefore proceed to issue its decision on the supposition that the concerned registrars will proceed to duly give effect to such decision, in appropriate consultation with the relevant Parties, and relevant provisions of the UDRP (including paragraph 4(k)), in due course.
The Panel has insufficient information to record any conclusions here regarding the underlying circumstances concerning the alleged request for deletion and subsequent changes in domain name status, but clearly such situations do little to assist the efficient operation of the UDRP. To the extent that an honest mistake may have occurred, the concerned Registrar does appear (after some prompting) to have taken the necessary steps to rectify the situation. To the extent that there may have been any irregularities, naturally it would be a matter for ICANN to determine whether there may be grounds for taking the matter further. In any event, the WIPO Center and/or Parties may wish to bring the present matter to the further attention of ICANN. In light of the above, it has been necessary for the Panel to extend the date for issuing the present Decision from May 4, 2011 to May 23, 2011. 4. Factual Background
The Complainant is a large and well-known provider of online networking services. The Complainant adopted and has used the mark FACEBOOK as an indicator of source for its services since 2004, and holds multiple registrations for the FACEBOOK mark in the United States of America and in other jurisdictions around the world. The first U.S. registration for the Complainant’s FACEBOOK mark was issued by the United States Patent and Trademark Office (USPTO) on January 10, 2006.
Since the Complainant begin offering its online networking services under the FACEBOOK mark in 2004, it has experienced substantial growth. As of December 2007, when the earliest of the disputed domain names was registered, there were more than 50 million active users of the Complainant’s services worldwide. By early 2010, the Complainant was providing online networking services in more than 70 languages to over 500 million active users worldwide.
The Complainant’s FACEBOOK branded services have been the subject of intense unsolicited media coverage, and have received numerous awards and recognitions. A fictional retelling of the Complainant’s founding was also depicted in the Academy Award winning and commercially successful film “The Social Network”. At least one UDRP panel already has held that the popularity of the Facebook name and website has made the FACEBOOK mark one of the most famous online marks in the world. See Facebook, Inc. v. Franz Bauer,WIPO Case No. D2010-1247.
The first of the twenty-one (21) disputed domain names that are the subject of this proceeding were registered in December 2007. The balance of the disputed domain names were registered on various dates between June 26, 2009 and March 12, 2011. The disputed domain names resolve to websites on which these domain names are offered for sale to the public. The record in this proceeding reflects that the Respondent has also offered for sale domain names incorporating other well-known third party marks such as , , , and , on websites similar to those affiliated with the disputed domain names. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain names are each nearly identical and confusingly similar to the Complainant’s distinctive and famous FACEBOOK mark, as each incorporates the Complainant’s mark in its entirety, adding only generic or descriptive terms. According to the Complainant, the combined terms suggest that the disputed domain names are associated with the Complainant.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant asserts that is had established rights in the FACEBOOK mark long prior to the Respondent’s registrations of the disputed domain names, and that the Respondent has not been authorized to use the Complainant’s mark. Further, the Complainant contends that the Respondent registered the disputed domain names solely to capitalize on the goodwill associated with the Complainant’s FACEBOOK mark. According to the Complainant, in such circumstances the Respondent cannot be said to be using the disputed domain names in connection with a bona fide offering of goods or services; nor can the Respondent claim to be making a noncommercial or legitimate fair use of the disputed domain names.
The Complainant maintains that the Respondent registered and is using the disputed domain names in bad faith. It is not possible, according to the Complainant, to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s FACEBOOK mark at the time of registration of any of the disputed domain names. The Complainant asserts that the Respondent registered the disputed domain names in order to exploit and profit from the confusing similarity to the Complainant’s well-known mark to drive traffic to the Respondent’s websites, on which the disputed domain names are offered for sale to the public. In addition, the Complainant contends that the Respondent has engaged in a bad faith pattern and practice of registering domain names incorporating the well-known trademarks of others, which the Respondent then offers for sale to the public. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain names registered by the Respondent are 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 with respect to the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Cancellation or transfer of the disputed domain names is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations which shall constitute evidence of the registration and use of a domain name in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that each of the disputed domain names is confusingly similar to the Complainant’s FACEBOOK mark, in which the Complainant beyond question has established rights through registration and use in commerce. The first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011.
In this instance, each of the disputed domain names incorporates the Complainant’s FACEBOOK mark in its entirety. The resulting similarity between the disputed domain names and the Complainant’s mark is in no manner diminished by the addition of descriptive or generic words, which when used in conjunction with the Complainant’s distinctive mark is still likely to create Internet user confusion. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524. Thus, based on a comparison of the Complainant’s mark and the disputed domain names, the Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain names. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names are confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain names to attract Internet users to corresponding websites where the domain names are offered for sale to the public. There is no indication that the Respondent has been commonly known by the disputed domain names, nor any evidence that the Respondent has been authorized by the Complainant to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes that the Respondent most likely registered the disputed domain names, each of which incorporates the Complainant’s distinctive and well-known FACEBOOK mark in its entirety, in order to trade on the initial interest confusion between the disputed domain names and the Complainant’s mark, to attract Internet users to the Respondent’s websites by falsely suggesting an association with the Complainant. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). In such circumstances, the Respondent’s offering of the disputed domain names for sale is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; First American Funds, Inc. v. Ult.Search, Inc,WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093. The Respondent has not been authorized to use the Complainant’s mark, and is there no evidence that the Respondent has been commonly known by the disputed domain names. Nor in view of the foregoing can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. Based on the undisputed facts and circumstances reflected in the record, the Panel entertains little doubt that the Respondent knew of and had in mind the Complainant’s distinctive and well-known mark when registering the disputed domain names. See Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453.
Based on the record before it, the Panel concludes that the Respondent registered and has used the disputed domain names with the bad faith intent to profit from and exploit the goodwill and fame associated with the Complainant’s FACEBOOK mark. See Aubert International SAS and Aubert France SA v. T Co., supra. The Respondent acquired the disputed domain names in bad faith under paragraph 4(c)(1) for the purpose of offering the domain names for sale to the highest bidder. To this end, the Respondent intentionally has used the disputed domain names in bad faith for commercial gain, to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark within the purview of paragraph 4(c)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant:
William R. Towns
Sole Panelist
Dated: May 23, 2011
1 See WIPO Overview 2.0, paragraph 1.2.
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