The Complainant is Facebook, Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Emma Boiton of Belize City, Belize. 2. The Domain Names and Registrar
The disputed domain names and are registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 2016, 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. On April 5, 2016, the Complainant submitted an amended Complaint, correcting an administrative error.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2016.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 3, 2016. 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, also commonly known as “FB”, is the world’s leading provider of online social networking services. It was founded in 2004. The Complainant has the trademarks FACEBOOK, inter alia, registered as United States Patent and Trademark Office (“USPTO”) trademark registration No. 3041791, registered on January 10, 2006 and as Community trademark registration No. 004535381, registered on June 22, 2011, and FB, registered as Community trademark registration No. 008981383, registered on August 23, 2011.
The disputed domain name was registered on July 24, 2015 and the disputed domain name on June 25, 2014. 5. Parties’ Contentions A. Complainant
The Complainant’s trademark FACEBOOK is one of the most famous online trademarks in the world and in 2015, it was ranked 23rd in Interbrand’s Global Brands report.
The disputed domain names incorporate the Complainant’s trademarks, FACEBOOK and FB, respectively, in their entirety and only differ from these trademarks by the addition of “at work”. The addition of generic terms is insufficient to diminish the confusing similarity between a domain name and the Complainant’s trademarks.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not a licensee of the Complainant, nor has she been otherwise allowed by the Complainant to use the Complainant’s trademarks in a domain name or otherwise.
It is inconceivable that the Respondent would not have been aware of the Complainant’s trademarks when registering the disputed domain names. The Respondent registered the disputed domain name on precisely the same date on which the Complainant announced that it was developing a new product called “FB@Work”.
The Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant or its competitors, for valuable consideration exceeding her out-of-pocket costs directly related to the disputed domain names. The Respondent has put the disputed domain names up for sale on the associated websites.
The Complainant also contends that the Respondent registered the disputed domain names in order to prevent the Complainant from registering them and that the Respondent has engaged in a pattern of such conduct. The Respondent is a cybersquatter who has registered numerous domain names infringing the trademarks of the Complainant and third parties and has been a respondent in at least three domain name disputes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Under the second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. According to the third element a complainant must establish that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has shown that it owns rights to the registered trademarks FACEBOOK and FB as indicated above, respectively. The disputed domain names include the Complainant’s respective trademarks in their entirety and combine them with the generic term “at work”.
In accordance with paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), noting that each disputed domain name consists of the Complainant’s trademark along with descriptive words, the Panel finds that each disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has she been otherwise allowed by the Complainant to use the Complainant’s trademarks in a domain name or otherwise. The Respondent has not rebutted these arguments.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”
The Panel considers that given the fame of the Complainant’s online networking service, it is inconceivable that the Respondent would not have known of the Complainant or its trademarks when registering the disputed domain names.
Considering also that the disputed domain name was registered on the same day on which the Complainant’s new product “FB@Work” was first published, and that the disputed domain names resolve to websites displaying sponsored links that produce revenue to the Respondent, the Panel finds that the registration and use of the disputed domain names is nothing more than an opportunistic attempt to benefit from the goodwill and reputation attached to the Complainant’s trademarks and the new product it has announced. This is a classic case of cybersquatting, and as evidenced by the Complainant, it is clear that the Respondent has engaged in a pattern of such conduct.
Based on the above, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore, the Panel finds that the third element of the Policy has been fulfilled. 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 disputed domain names and be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: May 16, 2016
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