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 Ricky Bhatia of Delhi, India. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 22, 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 January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 23, 2018. 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 operates a NASDAQ listed social media business with more than 2 billion users. The Complainant holds registrations for the trademark FACEBOOK in numerous countries which it uses to designate a range of goods and services associated with its online business. United States Trademark Registration No. 3122052, for example, was registered on July 25, 2006. Indian Trade Mark No. 1622925 for the mark FACEBOOK was registered on November 9, 2011.
The Complainant owns numerous domain names comprising or containing the FACEBOOK trademark and has operated an active website under that mark since 2004 with its main website using the domain name since 2005.
The Respondent registered both of the Disputed Domain Names and on March 9, 2017. The Disputed Domain Names resolve to website that in the case of mimics a service offered by the Complainant and in the case of resembles the Complainant’s website artwork. 5. Parties’ Contentions A. Complainant
The Complainant cites its United States Trademark Registration No. 3122052 registered on July 25, 2006 and Indian Trade Mark No. 1622925 registered on November 9, 2011 and numerous other registrations around the world, for the mark FACEBOOK, as prima facie evidence of ownership.
The Complainant submits that the mark FACEBOOK is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names and by 11 years. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in their entirety the FACEBOOK trademark and that the similarity is not removed by the additional descriptors or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because they resolve to websites that mimic or resemble its own, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Names.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks. The Complainant cites a number of previous UDRP decisions involving the Complainant and also submits evidence showing that the Respondent’s websites create “a
false impression that it is somehow connected with the Complainant”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark FACEBOOK in numerous countries including the United States.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the FACEBOOK trademark, the Panel observes that the Disputed Domain Names comprise in the case of (a) an exact reproduction of the Complainant’s trademark FACEBOOK; (b) preceded by the word “forgot”; (c) followed by the word “password”; (d) followed by the gTLD “.com” and in the case of (a) an exact reproduction of the Complainant’s trademark FACEBOOK; (b) followed by the words “customer-service” hyphenated; (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, that is typically sufficient to establish that the domain name is confusingly similar to that mark (see: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Facebook, Inc. v. Domain Asset Holdings,WIPO Case No. D2011-0516; Facebook, Inc. v. Andre Schneider / DomCollect AG,WIPO Case No. D2013-1183).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods and services. The evidence is that the Disputed Domain Names resolve to websites that, in one case, mimic the Complainant’s services, and in the other case, comprise an unauthorized copy of the Complainant’s artwork also inconsistent with any Respondent rights or legitimate interests.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Names and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.
On the issue of registration, the trademark FACEBOOK is such a famous mark for social media related products and services that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No.
D2000-0003; Facebook, Inc. v. Domain Asset Holdings, supra (“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”); Facebook, Inc. v. Andre Schneider / DomCollect AG,WIPO Case No. D2013-1183(“Complainant’s trademark is well-known worldwide”); Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin,WIPO Case No. D2013-2030 (“Respondents are relying on the Complainant’s famous trademark to attract Internet users”); Facebook Inc. v. Puneet Agarwal,WIPO Case No. D2017-1491 (“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”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814; Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin, supra).
Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Names at least eleven years after the Complainant first established trademark rights in the FACEBOOK mark.
On the issue of use, the evidence that the Disputed Domain Names mimic the Complainant’s services or resolve to an unauthorized copy of the Complainant’s artwork is evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that such use of the Disputed Domain Names creates a misleading impression of association with the Complainant, and may allow for the Respondent to illegitimately obtain sensitive personal data from unsuspecting Internet users searching for the website or services of the Complainant.
In this case, the Complainant has a well-known trademark, the Disputed Domain Names resolve to fake versions of the Complainant’s website and services. This Panel regards such conduct as prima facie evidence of bad faith use in the absence of a response.
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 disputed domain names and be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: March 9, 2018
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