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 Mirza Azim of Dhaka, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2016. On May 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2016.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 29, 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
It results from the undisputed evidence provided by the Complainant that the Complainant is the registered owner of many trademark registrations consisting of or containing the term “Facebook”, includingUnited States Trademark Registration No. 3041791 for FACEBOOK (word), registered on January 10, 2006, and figurative International Trademark Registration No. 1075094, including the verbal element FACEBOOK, registered on July 16, 2010. It further results from the Complainant’s undisputed evidence and allegations that the Complainant is the owner of numerous domain names consisting of or including the term FACEBOOK, such as (created on March 28, 1997), , , , , , and .
The Respondent registered the disputed domain name on January 19, 2014. It results from the Complainant’s documented allegations that this domain name is resolving to a website that displays the message “Website Coming Soon! Please check back soon to see if the site is available”.
On February 10, 2016, the Complainant sent a cease and desist letter to the Respondent asserting its trademark rights and requesting the Respondent to transfer the disputed domain name to the Complainant at no cost. The Respondent did not reply to this request. 5. Parties’ Contentions A. Complainant
According to the Complainant’s undisputed allegations, Facebook is the world’s leading provider of online social networking services with more than 1.59 billion monthly active users and 1.04 billion daily active users on average worldwide (as of December 2015), including over 14 million users in Bangladesh. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide in both its services and brands, and its FACEBOOK trademark is currently one of the most famous online trademarks in the world. Its main website “www.” is currently ranked as the second most visited website in Bangladesh and in the world.
The Complainant has developed a product known as both “Facebook at Work” and “FB@Work”, which allows users to create a Facebook work account that is separate from their personal Facebook account. With a “Facebook at Work” account, users can use Facebook tools to interact with coworkers and share information that will only be visible to other people at the workplace.
According to the Complainant, the fame of its trademark is also evidenced by the number of cybersquatters who have sought to unfairly and illegally exploit the very significant consumer recognition and goodwill attached to its trademark.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark FACEBOOK, since it incorporates said trademark in its entirety, adding only the generic term “work” that actually reinforces the confusing similarity with its trademark, given that it has developed a product called “Facebook at Work”.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. It is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name is pointing to a website that displays the message “Website Coming Soon!” and is therefore being passively held. Furthermore, the Complainant notes that there is no evidence that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or service. As a consequence, the Respondent cannot conceivably claim that he is commonly known by the disputed domain name. Neither can the Respondent assert that he has made or is currently 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, given that the disputed domain name is merely pointing to a website displaying the message “Website Coming Soon!” and there is no evidence that it has ever been used for any noncommercial or fair purposes.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant holds that its FACEBOOK trademark is highly distinctive and renowned throughout the world, including in Bangladesh, and has been continuously and extensively used since 2004, having rapidly acquired considerable goodwill and renown worldwide. Given the Complainant’s renown and goodwill worldwide, including in Bangladesh, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s FACEBOOK trademark at the time of registration of the disputed domain name in 2014, particularly as the Complainant’s earliest trademark rights predate the registration date of the disputed domain name by 10 years and, moreover, because at this time the Complainant’s social networking service had already acquired significant goodwill worldwide, with over 1 billion users worldwide, including over 10 million users in Bangladesh. The Complainant therefore submits that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. The Complainant further submits that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the corresponding domain name, and has engaged in a pattern of such conduct. In fact, the Complainant alleges that the Respondent registered many domain names infringing not only the Complainant’s trademark but also third party trademarks (such as , which is now registered to the Complainant since the Respondent allowed it to lapse, , , , and ). Given the Respondent’s registration of domain names such as and , it is clear that the Respondent registered the disputed domain name to capitalize on the supposed potential for remuneration via the websites of certain well-known Internet brands, including that of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a 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”.
Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks consisting of or including the term “Facebook”. Reference is made in particular to United States Trademark Registration No. 3041791, registered on January 10, 2006, and International Trademark Registration No. 1075094, registered on July 16, 2010. Both trademarks predate the creation date of the disputed domain name, which is January 19, 2014.
Many UDRP panels have found that a disputed domain name is confusingly similar to a Complainant’s trademark where the disputed domain name incorporates the Complainant’s trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceeding where the Complainant’s registered trademark is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant’s registered trademark FACEBOOK, as its distinctive element, with the generic term “work”, which is descriptive of one of the services available on the Complainant’s site, especially given that the Complainant has developed a product called “Facebook at Work”. The additional element “work” may increase the confusing similarity between the trademark and the disputed domain name. The addition of this descriptive term to the distinctive trademark is insufficient in itself and does not serve to distinguish the disputed domain name from the trademark, but rather, may reinforce the association of the Complainant’s trademark with the disputed domain name (see, e.g., Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547; Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP,WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra).
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No true content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor 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 in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra). In addition, the Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trade name with the intent to attract Internet users for commercial gain (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,supra; Koc Holding A.S. v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847).
Furthermore, the Respondent is neither commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy. In particular, the Respondent cannot conceivably claim that it is commonly known by the disputed domain name, given the notoriety surrounding the FACEBOOK trademark which is associated with the Complainant. Finally, it results from the Complainant’s undisputed allegations that the Respondent is neither a licensee of the Complainant, nor has been otherwise allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
It results from the Complainant’s undisputed allegations and evidence that Facebook, Inc. was established in 2004 and has worldwide goodwill and renown, including in Bangladesh, where the Respondent is located and where the Complainant’s social networking service had already acquired over 10 million users in 2014, at the time the disputed domain name was registered. At that time (2014) the Complainant’s FACEBOOK-trademarks that predate the registration date of the disputed domain name by years had already been widely known worldwide. Therefore, it is the view of this Panel that the Respondent – when registering the disputed domain name – knew that the disputed domain name included the Complainant’s FACEBOOK trademarks. Registration of this disputed domain name in the absence of rights or legitimate interests, with awareness of the reputed FACEBOOK trademark and in combination with a descriptive term (“work”), which is linked to one of the Complainant’s businesses (i.e., “Facebook at Work”), in this case amounts to registration in bad faith (compare e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
The disputed domain name does not resolve to an active website and is therefore being passively held by the Respondent. In this regard, the Panel notes that passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) given the overall circumstances of the case at hand, namely the Complainant’s renown worldwide, the Respondent’s pattern of domain name registrations containing the Complainant’s and third party’s trademarks and the fact that the combination with the term “work” clearly links the disputed domain name to the Complainant’s business “Facebook at Work”.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 disputed domain name be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: July 12, 2016
Full & Egal Universal Law Academy