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 Puneet Agarwal of Alwar, Rajasthan, India, self-represented. 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 August 1, 2017. On August 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2017, 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.
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 August 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2017. In accordance with paragraph 5(b) of the Rules, the Response due date was extended until September 7, 2017. The Response was filed with the Center on September 7, 2017.
The Center appointed Sir Ian Barker as the sole panelist in this matter on September 20, 2017. 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, a Californian corporation, is one of the world's largest providers of online social networking services. It allows its 1.94 billion monthly active users and its 1.28 billion daily active users to stay connected with and to share information with friends and family.
Founded in 2004, it has 84.5% of its users outside of the United States and Canada. Its social networking services are provided in over 70 languages. Its "app" is the third most downloaded application in the world and the second most downloaded in India.
The Complainant's active users in India have increased by 27% in the six-month period from April 2017 (i.e., over 50 million users). India is likely to become the country with the largest audience for Facebook with a total potential audience as at July 2017 of 241 million active users.
The Complainant has developed considerable reputation and goodwill worldwide and Facebook is highly ranked as a global brand.
The Complainant owns numerous trademark registrations for the mark FACEBOOK in many jurisdictions throughout the world. Such trademark registrations include but are not limited to the following:
- Indian trademark No. 1622925, FACEBOOK, registered as of November 20, 2007 (class 9);
- United States trademark No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004) (class 38);
- United States trademark No. 3122052, FACEBOOK, registered on July 25, 2006 (first use in commerce in 2004) (class 38);
- European Union trademark No. 004535381, FACEBOOK, registered on June 22, 2011 (classes 35 and 38); and
- International trademark No. 1075094, FACEBOOK, registered on July 16, 2010 (classes 9, 35, 36, 38, 41, 42 and 45).
The Complainant also owns numerous domain names in many countries which include the mark FACEBOOK. Its official page on Facebook has over 172 million "likes". It has 14 million followers on Twitter.
The Complainant has taken successful action under the Policy on many occasions against registrants of domain names that are confusingly similar to the Complainant's trademarks.
The disputed domain name was registered on April 5, 2017. Previously pointing to a parked page displaying sponsored links, it is currently redirecting to a domain name broker's platform, namely "Uniregistry Market", where the disputed domain name is offered for sale at USD 1,000.
On May 9, 2017, the Respondent sent an unsolicited email to the Complainant's lawyer proposing to sell the disputed domain name. The Complainant's lawyer replied on June 19, 2017 with a cease-and-desist letter to the Respondent asking for transfer of the disputed domain name. The Respondent, in his reply to this letter, asserted that his engineering college was named "Facebook Engineering" and that he had "request pending at Indian trade mark office" in this term. The Respondent proposed to sell the disputed domain name to the Complainant for a price of USD 1,000 and notified "Uniregistry Market" of this potential transaction. Further to the Complainant's refusal to purchase the disputed domain name, the Respondent approached the Complainant's lawyer again and said that he would transfer the disputed domain name for free, but when asked to do so, he requested USD 1,000 for "miscellaneous charges". 5. Parties' Contentions A. Complainant
The disputed domain name incorporates the Complainant's FACEBOOK trademark in its entirety with the addition of the descriptive term "engineering". It is well established in UDRP cases that, where the relevant trademark is contained within the disputed domain name, the addition of a descriptive or generic term does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0") and, for instance, Facebook, Inc. v. Mirza Azim,WIPO Case No. D2016-0950. ("Many UDRP panels have found that a disputed domain name is confusingly similar to a Complainant's trade mark where the disputed domain name incorporates the Complainant's trade mark in its entirety".)
The Respondent has no rights or legitimate interests in the disputed domain name and has not asserted any. None of the situations contemplated by Paragraph 4(c) of the Policy applies nor was any claimed by the Respondent. The disputed domain name was registered and is being used in bad faith.
The disputed domain name was used by the Respondent to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites. See Paragraph 4(b)(iv) of the Policy.
The disputed domain name has previously pointed to a parked page displaying various sponsored or pay-per-click ("PPC") links. It is therefore clear that the Respondent deliberately used the disputed domain name, which is confusingly similar to the Complainant's FACEBOOK trade mark, to attract Internet users searching for the Complainant and to divert them to the Respondent's own website. Such type of use of the disputed domain name – from which the Respondent is undoubtedly obtaining financial gain by means of PPC links or some other type of revenue generating scheme – is clearly in bad faith given that the Respondent is deliberately seeking to profit from the Complainant's goodwill and renown for his own financial gain. See Ustream. TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598. ("The Respondent's use of the disputed domain name for a PPC parking page constitutes bad faith use because the Respondent is attracting Internet users to its website by causing confusion as to whether its website is, or is associated with the Complainant or its services".)
It is not necessary for the Respondent himself to have profited directly from those commercial links in order to establish bad faith use. It would be sufficient for the third parties behind the sponsored links or another third party to have made some profit from such arrangements. See also section 3.5 of the WIPO Overview 3.0.
Furthermore, the fact that the Respondent registered the disputed domain name to sell it to the Complainant for valuable consideration can also qualify as use in bad faith of the disputed domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001, ("because respondent offered to sell the domain name to complainant for valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has 'used' the domain name in bad faith as defined in the Policy".) and Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi,WIPO Case No. D2017-0391 ("Moreover, offering a domain name for sale in such a manner as in itself evidence of use in bad faith of the domain name".).
The current pointing of the disputed domain name to a third party platform where the disputed domain name is offered to the public for sale at a price of USD 1,000 may also lead to a finding of bad faith use as the Respondent knew or should have known that the Complainant, being the registrant of numerous domain names incorporating its FACEBOOK trademark, would have an interest in the disputed domain name, which is highly distinctive and can only evoke the Complainant and its rights.
Given the overwhelming renown and popularity of the Complainant's FACEBOOK trademark worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant's trademark, there simply cannot be any actual or contemplated good faith use of the disputed domain name as this would invariably result in misleading diversion and taking unfair advantage of the Complainant's rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WPO Case No. D2000-0003. B. Respondent
The Respondent says he is a "small time domainer" and does not like to be labelled as a "cybersquatter". He says that he created the disputed domain name "for legitimate speculation as previously domain names considering words 'face' and 'book' have been sold and bought legally". The words "face" and "book" are famous in India.
He was willing to surrender the disputed domain name but still required payment of USD 1,000 if "[F]acebook thinks that [his] engineering college name will threaten [F]acebook identity". 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
To be successful, the Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present (paragraph 4(a) of the Policy).
The submissions made by the Complainant and recorded above correctly set out the legal situation as elaborated in many cases under the Policy. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's trademark. The addition of the descriptive word "engineering" does not diminish the confusion. The situation is similar to Facebook, Inc. v. Cetinjes.r.o,WIPO Case No. D2014-1070 where the disputed domain name was .
Consequently, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademarks in a domain name.
This fact and the circumstances of the present case satisfy paragraph 4(a)(ii) of the Policy in the absence of any convincing evidence from the Respondent.
The Respondent could have claimed that one of the situations envisaged by paragraph 4(c) of the Policy applied to the registration of the disputed domain name, e.g., by invoking paragraph 4(c) of the Policy to the satisfaction of the Panel that one of its three provisions applied in this case. However, the Respondent has chosen not to do so, and the Complainant has met its burden. The Complainant's claim that it gave the Respondent no authority is not challenged by the Respondent. The Respondent's unsubstantiated claim to open an engineering school does not provide it with any rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. Therefore, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Given the fame of the Complainant – both worldwide and in India – it is beyond belief that the Respondent did not know of the Complainant and its FACEBOOK mark at the date of registration of the disputed domain name earlier this year.
His attempts to sell the disputed domain name are clear indicia of bad faith registration and use. The fact that he is in the business of dealing with domain names makes his transgression all the worse.
The weak statement in the Response that the disputed domain name is the name of an engineering college lacks any document which may support the assertion.
Consequently, paragraph 4(a)(iii) of the Policy is satisfied. 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.
Sir Ian Barker
Sole Panelist
Date: September 27, 2017
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