Complainant is Facebook Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Morgan Pasco, RealEstate Business of Los Angeles, California, United States. 2. The Domain Names and Registrars
The disputed domain names, which are registered with GoD, LLC, are: , , , , and . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on March 15, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and other details for each registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2018.
Following the notification of default, on April 12, 2018, the Center received a communication from Respondent stating:
“I will call GoDaddy next week and not have the names forwarded to my Facebook page. I have only asked that if someone wants the names they can buy them from me as I bought them not knowing I shouldn’t.”
On April 13, 21018, the Center acknowledged receipt of the message, identifying a procedure by which Complainant might request suspension of the proceedings for 30 days in which to explore settlement. The Center received no further communication from either party.
The Center appointed Debra J. Stanek as the sole panelist in this matter on April 18, 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
Complainant operates the Facebook online social network and owns two United States federal trademark registrations for the mark FACEBOOK, the first of which issued on January 10, 2006 (Reg. No. 3041791), along with European Union and International registrations. Complainant also owns the domain name .
It appears that each of the disputed domain names was registered on May 25, 2015 and that each is used to redirect visitors to a Facebook page that appears to be Respondent’s personal Facebook page, which displays a link to another Facebook page apparently used for Respondent’s real estate business.
In response to Complainant’s objection to the registration of , Respondent initially stated that she would “donate the name” to Complainant, but later revealed that she had registered other domain names. Despite indicating at various times that she would “donate” them to Complainant, Respondent never transferred any of them. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Each of the disputed domain names is identical or confusingly similar to Complainant’s FACEBOOK mark.
Complainant is the world’s leading provider of online social networking services through the website at “www..” Complainant began its services in 2004 and expanded them worldwide in 2006. With more than 2.13 billion monthly active users and over a billion daily active users on average, the FACEBOOK mark is one of the most famous trademarks in the world. Complainant owns United States, European Union, and International registrations for the FACEBOOK mark. In addition, Complainant owns numerous domain names consisting of the mark with various generic Top-Level Domains (“gTLDs”).
Each of the disputed domain names incorporate the FACEBOOK mark in its entirety with the addition of a generic term (“feature film” or “feature films”). Because the FACEBOOK mark is recognized within each disputed domain name, the addition of a descriptive or generic term does not prevent a finding of confusing similarity under the first element. Further, the addition of the “gTLDs”, “.org”, “.com”, and “.video” or the country code Top-Level Domain name (“ccTLD”) “.co” does not diminish the similarity and is irrelevant under this element. 2. Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in any of the disputed domain names. None of the circumstances set out in paragraph 4(c) of the Policy to demonstrate rights or legitimate interests are available to Respondent.
Respondent is not a licensee of Complainant and has not been otherwise allowed use the FACEBOOK mark, in a domain name or otherwise.
Respondent cannot assert that, prior to any notice of this dispute, she was using, or had made demonstrable preparations to use, any of the disputed domain names in connection with a bona fide offering of goods or services. Each of the disputed domain names redirect to Respondent’s personal Facebook page, which not prominently displays a link to the Facebook page Respondent uses for her real estate business as well as sharing numerous posts from the real estate page serving to promote that business. Thus, Respondent’s redirection of visitors looking for a Facebook page related to feature films to a totally unrelated page linking to a real estate business, for Respondent’s commercial gain is not a bona fide use.
Considering the worldwide fame of Complainant’s FACEBOOK mark:
Respondent cannot plausibly claim that she is commonly known by the disputed domain names. Furthermore, Complainant’s investigation has not disclosed that Respondent has any rights in the term “facebook,” “facebookfeaturefilm,” or “facebookfeaturefilms.”
It is impossible to conceive of any plausible actual or contemplated active use of any of the disputes domain names that would be legitimate. 3. Registered and Used in Bad Faith
Each of the disputed domain names was registered and is being used in bad faith.
Respondent registered each of the disputed domain names in bad faith. Respondent cannot argue that she did not know of Complainant or its FACEBOOK mark when she registered the names in 2015:
Considering the fame of the FACEBOOK mark, particularly in the United States where Respondent is located, it inconceivable that Respondent was not aware of Complainant and its mark.
In her communications with Complainant, Respondent indicated that she registered the disputed domain names with Complainant in mind.
Photos on Respondent’s personal Facebook page date back to 2012, indicating her knowledge of Complainant and its mark.
By registering five domain names incorporating the FACEBOOK mark, Respondent has engaged in a pattern of conduct to prevent Complainant from reflecting its mark in corresponding domain names.
Respondent’s use of each of the disputed domain names is in bad faith. Each redirects visitors to Facebook pages that promote her real estate business. This is use to intentionally attract, for commercial gain, visitors by creating a likelihood of confusion with Complainant’s mark.
Respondent’s communications with Complainant regarding “donating” the disputed domain names, and subsequent refusal to do so, indicate she intended to transfer them only for an appropriate amount of money. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b). Not responding to a complaint does not automatically result in a finding for the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. A complainant continues to have the burden of establishing each element. The Panel may, however, draw such inferences from Respondent’s default as appropriate. See Rules, paragraph 14(b). A. Identical or Confusingly Similar
Complainant has established its rights in the mark FACEBOOK through its United States federal trademark registration.
None of the disputed domain names are identical to Complainant’s mark. The question then becomes whether the disputed domain names (disregarding the TLDs) are confusingly similar to the FACEBOOK mark. This typically involves a straightforward comparison of the textual portion of the mark with the domain name. See WIPO Overview 3.0, section 1.7. The Panel subscribes to the consensus view that the test for confusing similarity is satisfied where the mark is recognizable within the domain name, despite the addition of descriptive, geographical, or other terms. See WIPO Overview 3.0, section 1.8.
Here, the addition of the descriptive term “feature films” or “feature film” after “facebook” does not differentiate or distinguish any of the disputed domain names from Complainant’s mark.
The Panel finds that each disputed domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (once complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent). The Panel finds that Complainant has made a prima facie showing under this element.
It does not appear that Respondent is commonly known by any of the disputed domain names. Complainant has not authorized Respondent’s use of any of the disputed domain names. On this record, it does not appear that Respondent has used the disputed domain name in connection with a bona fide offering, quite the opposite, in fact. Respondent appears to be using the disputed domain name to attract visitors to her personal and business Facebook pages.
The Panel concludes that the Complainant has established that Respondent lacks rights or legitimate interests in each disputed domain name. C. Registered and Used in Bad Faith
Complainant must establish that each disputed domain name was registered and is being used in bad faith.
Complainant’s rights in its FACEBOOK mark predate registration of the disputed domain names. The email communications submitted by Complainant show that Respondent knew of Complainant’s mark and registered the five disputed domain names with Complainant’s mark in mind. Actual knowledge of Complainant and its mark is demonstrated by the redirection of website visitors to her own Facebook page.
Considering these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith under paragraphs 4(b)(ii) and (iv) 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 Complainant.
Debra J. Stanek
Sole Panelist
Date: May 2, 2018
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