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 Werner Gonzalez of Guatemala, Guatemala. 2. The domain names and Registrar
The disputed domain names and are registered with Ascio Technologies Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 3, 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 November 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 28, 2017.
The Center appointed Torsten Bettinger as the sole panelist in this matter on December 4, 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, founded in 2004, provides online social networking services worldwide, and is the owner of numerous trademark registrations in the term FACEBOOK in many jurisdictions throughout the world, including in Guatemala, for instance:
- Guatemala Trademark No. 161057, FACEBOOK, registered on January 28, 2009 (class 38);
- Guatemala Trademark No. 161620, FACEBOOK, registered on February 17, 2009 (class 42);
- 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); and
- International Trademark No. 1075094, FACEBOOK, registered on July 16, 2010 (classes 9, 35, 36, 38, 41, 42 and 45).
The disputed domain names were registered on 13 September 2016 and do not resolve to any active website.
On 20 September 2017, the Complainant's lawyers sent a cease-and-desist letter to the Respondent asserting its trademark rights and requesting the transfer of the disputed domain names to the Complainant.
The Respondent did not reply to the Complainant's cease-and-desist letter. 5. Parties' Contentions A. Complainant
The Complainant describes itself as the world's leading provider of online social networking services, allowing Internet users to stay connected with friends and family, and to share information mainly via its website available at "". The Complainant has submitted evidence that it is the owner of numerous domain names consisting of or including the FACEBOOK mark.
The Complainant contends that
- it has more than 2 billion active users and almost 1.3 billion daily active users worldwide (as of June 2017), with over 5 million monthly active users in Guatemala;
- its main website "" is currently ranked as the third most visited website in Guatemala and the second most visited website in the world;
- with approximately 84.8% of its daily active users outside the United States and Canada, its social networking services are provided in more than 70 languages, including in Spanish;
- its trademark FACEBOOK is currently one of the most famous trademarks in the world;
- it made substantial investments to develop a strong presence online by being active on different social media forums and that, for instance, it has approximately 169 million "likes" on its Facebook page and over 14 million followers on Twitter.
The Complainant provided evidence that the disputed domain names, at the time of filing, were not resolving, and asserts that the Respondent was recently using the disputed domain name to send emails using the address "[..]@" to Facebook users in order to perpetrate fraudulent activities by misrepresenting himself as the Complainant and asking Facebook users to validate their accounts by clicking on a link.
With regard to the requirement of "identity or confusing similarity between the trademark and the domain name" pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain names are confusingly similar to a trademark in which it has rights as the disputed domain names incorporate the Complainant's FACEBOOK trademark in its entirety and only differ from the Complainant's trademarks by the addition of descriptive terms such as "support" and "technicalsupport".
The Complainant argues that the addition of these terms do not serve to distinguish the disputed domain names in any material way but actually reinforces the confusing similarity with the Complainant's trademark as these are terms strongly related to the Complainant and its activities.
The Complainant also point out that the Complainant's official email addresses for its support services is "[...]@" and that therefore it is likely that at least some members of the public will assume that the disputed domain names will lead them to online services offered, licensed or authorized by, or somehow connected with the Complainant.
The Complainant further argues that it is generally accepted that the suffix, such as ".com", is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
With regard to the Respondent having no rights or legitimate interests in the disputed domain names, the Complainant submitted that
- the Respondent cannot assert that, prior to having notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, as there is strong evidence that the disputed domain name was recently being used by the Respondent to send emails misrepresenting himself as the Complainant in order to perpetrate fraudulent activities to send fraudulent emails to harvest personal information with malicious intent;
- the Respondent cannot conceivably claim that he is commonly known by the Complainant's trademarks, in accordance with paragraph 4(c)(ii) of the Policy, given the Complainant's notoriety and the fact that the term "facebook" is exclusively associated with the Complainant;
- the Respondent cannot assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to paragraph 4(c)(iii) of the Policy, as there is strong evidence that the disputed domain name was being used to send fraudulent emails;
- given the overwhelming renown popularity of the Complainant's FACEBOOK trademark worldwide, and the nature of the disputed domain names themselves, it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent (or a third party) that would not be illegitimate as they would invariably create a false association with the Complainant and thus result in misleading diversion or taking unfair advantage of the Complainant's rights.
Finally, with regard to the disputed domain names having been registered and being used in bad faith, the Complainant argues that,
- the Complainant's FACEBOOK trademark is highly distinctive and famous throughout the world and has rapidly acquired considerable goodwill and renown worldwide, including in Guatemala, where the Respondent is based;
- given the Complainant's renown and goodwill worldwide, including in Guatemala, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant's FACEBOOK trademark at the time of registration of the disputed domain names in 2016;
- the Respondent could simply not have chosen the disputed domain names for any reason other than to deliberately cause confusion amongst Internet users in order to take unfair advantage of the Complainant's goodwill and reputation;
- the Respondent's use of the domain name to send phishing emails using the address "[…]noreply@" misrepresenting itself as the Complainant constitutes strong evidence of bad faith;
- the examples listed in paragraph 4(b) of the Policy are "without limitation" and that the use of a disputed domain name in a phishing scheme "is in itself evidence that the disputed domain name was registered and is being used in bad faith";
- the fact that the disputed domain names are not resolving does not prevent a finding of bad faith, given the strength and renown of the Complainant's trademarks, and the Respondent's prior use of the disputed domain name in connection with phishing related activities;
- given the overwhelming renown popularity of the Complainant's FACEBOOK trademark worldwide, including in Guatemala, there cannot be any actual or contemplated good faith use of the disputed domain names by the Respondent or a third party other than the Complainant as they would invariably create a false association with the Complainant that would result in misleading diversion and taking unfair advantage of the Complainant's rights;
- that the Respondent's failure to respond to the Complainant's cease-and-desist letter constitutes in the circumstances of this case an additional strong indication of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698 (); Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110 (); Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843 ( and ); AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327 ( and ); BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480 (); see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
In this case, the disputed domain names only differ from the Complainant's trademarks by the addition of descriptive terms such as "support" and "technical".
The addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant's trademark and in itself to avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 ( et al.)("The disputed domain names contain as a first and/or dominant element the Complainant's famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, "account", "password", "hacker", "analytics", "survey" et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way."); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 ( et al.) ("The domain name consists of the Complainant's registered mark DROPBOX plus the generic words "support" and "number" separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant's DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy."); see also section 1.9 of WIPO Overview 3.0).
If anything confusing similarity is reinforced by the addition of generic terms "support" and "technicalsupport" as these are terms strongly related to the Complainant and its activities and by the fact that the Complainant's official email addresses for its support services is "[...]@".
Finally, it has been long established under the UDRP decisions that the specific generic Top-Level Domain ("gTLD") designation such as ".com", ".net" ".org" is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain names and are confusingly similar to the Complainant's trademark FACEBOOK in which Complainant has exclusive rights. B. Rights or Legitimate Interests
The Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [the Respondent] of the dispute, your 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are 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 Complainant has asserted that it never licensed or permitted the Respondent to use its FACEBOOK trademark, that the Respondent has no trademark rights that correspond to the disputed domain names and that the Respondent has not been commonly known by the disputed domain names.
Furthermore, the Complainant has provided strong evidence that the disputed domain name was being used to send fraudulent emails and that therefore the Respondent was not using, or intending to use the disputed domain names in a fair manner, but rather was seeking to unfairly exploit the Complainant's goodwill and reputation in order to obtain sensitive information for the Respondent's financial gain by means of fraud or some other type of illegitimate activity.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant's prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names; or
(ii) The Respondent has registered the disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted 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 the Respondent's website or location.
Based on the record in this proceeding, the Panel is satisfied that the Complainant's FACEBOOK mark is highly distinctive and famous throughout the world, including in Guatemala, where the Respondent is based.
Given the Complainant's renown and goodwill worldwide, including in Guatemala, it is inconceivable that the Respondent, did not have knowledge of the Complainant's FACEBOOK trademark at the time of registration of the disputed domain names in 2016.
As the disputed domain names reproduce the mark in its entirety with the mere addition of the descriptive terms "support" and "technicalsupport", the Panel concludes that on the balance of probabilities the Respondent has registered the disputed domain names with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant's goodwill and reputation.
The Panel therefore concludes the Respondent registered the disputed domain names in bad faith.
Based on the record in this proceeding there is also strong evidence that the Respondent used the disputed domain name to send phishing emails using the address "[…]@" misrepresenting himself as the Complainant.
Prior panels deciding under the Policy have consistently held that use of a domain name for phishing related activities is inherently in bad faith. (See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions,WIPO Case No. D2017-1336 () ("Phishing is bad faith use under the Policy. The examples listed in paragraph 4(b) of the Policy are "without limitation". "'Phishing' is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc."); see also Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001. The use of a disputed domain name in a phishing scheme "is in itself evidence that the disputed domain name was registered and is being used in bad faith." BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364.).
The Panel therefore concludes that the Respondent has used the disputed domain name in bad faith.
The fact that the disputed domain name is being used to send phishing emails is a strong indication that the Respondent's intentions for the disputed domain name are also not well-meaning. The fact that there is no evidence that the disputed domain name has not yet been actively used does not prevent a finding of bad faith use.
Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. (See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.)
While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant's mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
(iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and
(iv) the implausibility of any good faith use to which the domain name may be put. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)
The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain names.
Based on the record in this proceeding, the Panel is satisfied that the Complainant's FACEBOOK mark is highly distinctive and famous throughout the world, including in Guatemala, where the Respondent is based.
Given the Complainant's renown and goodwill worldwide, including in Guatemala, it is inconceivable that the Respondent, who is based in Guatemala, did not have knowledge of the Complainant's FACEBOOK trademark at the time of registration of the disputed domain name in 2016.
Given that the Complainant's FACEBOOK mark is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain names are also not susceptible to be use in a good faith generic or descriptive sense.
One difference between this case and the Telstra decision is that, unlike as in Telstra, in this case, the Respondent has supplied registration information, which does not prima facie appear to be false. However, the Telstra holding does not turn on the use of false contact information; rather, the central holding of that case is that passive holding of a domain name which incorporates a well-known mark can itself suffice to establish bad faith registration and use. See,e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, supra ("The provision of false contact information or operation under a false identity is not a prerequisite for a finding of bad faith registration and use based on respondent inaction").
Having found that the Respondent's registration of the disputed domain names as well as the use of the disputed domain name and the passive holding of the disputed domain name constitute bad faith registration and use, the Complainant has also satisfied its burden on 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 names and be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: December 18, 2017
Full & Egal Universal Law Academy