The Complainant is Facebook Inc. of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France (hereinafter "Complainant").
The Respondent is Dorthea Canizales of Acton, Massachussets, United States ("hereinafter "Respondent"). 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with Gandi SAS (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 3, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 7, 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 contact information for the disputed domain names.
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 Respondent of the Complaint, and the proceedings commenced on August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 5, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 12, 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. Language of the Proceedings
Paragraph 11(a) of the Rules provides that the language of the proceedings shall be that of the Registration Agreement that was provided to the registrant by the Registrar, subject to the power of the Panel to determine otherwise based on the circumstance of the proceedings. In the present case, the Registration Agreements are provided in several languages, including English. Complaint, Annex 2. Complainant was founded in and is headquartered in the United States, where English is the official language. Respondent furnished information claiming to be a resident of the United States. Complaint, Annex 1. The disputed domain names incorporate various English words, such as "record," "policy," "notify," and "mobile." The web pages to which some of the domain names point contain statements in the English language. Complaint, Annexes 11 and 12. Accordingly, the Panel determines that the language of the proceedings is English. 5. Factual Background
Complainant is the world's leading provider of online social networking services headquartered in Menlo Park, California, Unites States. The service was originally developed in 2004 for the use of students at Harvard University, which is situated in Boston, Massachusetts.
Respondent is an individual who claims to reside in Acton, Massachusetts, a suburb of Boston, Massachusetts. The Panel cannot be certain of this, since the street address given by Respondent is non-existent.
In 2006, Complainant's social networking service was opened to anyone in the world having a valid email address, and by September 2012 the service had one billion users worldwide. Presently the service has almost two billion users monthly and one billion and one quarter users daily worldwide. Complainant's social networking services are provided in more than 70 languages. The service is the most downloaded application in both the United States and the world. Complaint, Annexes 5 and 6.
The shorthand version of Complainant's famous FACEBOOK business name and service mark is FB, an identification which has also been trademarked in various jurisdictions around the world. Complaint, Annex 13. For example, the "FB" mark was registered with the United States Patent and Trademark Office ("USPTO"), on December 23, 2014, in the European Union on August 23, 2011, and in Mexico on November 30, 2011. In addition, Complainant has registered numerous domain names in which "fb" has been used as the Second Level Domain name ("SLD") or as a significant part of an SLD. Complaint, Annex 7. If one uses the Google search engine to search "FB", the top results refer to Complainant. Complaint, Annex 10.
Respondent registered the five disputed domain names in May 2018. The following is the information currently known as to the use of each of the disputed domain names:
1) -This domain name has been used to resolve to a fake "Facebook account confirmation" page in the English language. The domain name currently resolves to an error page. Complaint, Annex 11.
The domain name was previously used to point to "phishing" pages which prominently displayed the white on blue "facebook" logo, inviting the user to "Confirm your identity now" following the message:
"Dear User,
Your Facebook account must be confirmed today in order to avoid disabling! This process is quick and must be done by all of our users as an extra security measure. If you fail to confirm your account today it will be limited and then disabled!"Complaint, Annex 12.
It can be presumed that the user would be requested to disclose personal and confidential information such as password, address, telephone, email address, and perhaps even social security number in order to "confirm" the user's "Facebook account."
2) -This domain name has been used to resolve to a fake "Facebook account confirmation" page in the English language. The domain name currently resolves to an error page. Complaint, Annex 11.
The domain name was previously used to point to "phishing" pages, inviting the user to "Confirm your identity now" following the message:
"Dear User,
Your Facebook account must be confirmed today in order to avoid disabling! This process is quick and must be done by all of our users as an extra security measure. If you fail to confirm your account today it will be limited and then disabled!" Complaint, Annex 12.
It can be presumed that the user would be requested to disclose personal and confidential information such as password, address, telephone, email address, and perhaps even social security number in order to "confirm" the user's "Facebook account."
This domain name is now pointing to pages displaying the following statement:
"This website is misleading:
This page has been blocked as it may cause you to conduct dangerous actions, such as installation of software or disclosure of personal information like your password or your bank card number." Complaint Annex 11.
3) -This domain name has been used to resolve to a fake "Facebook account confirmation" page in the English language. The domain name currently resolves to an error page. Complaint, Annex 11.
The domain name was previously used to point to "phishing" pages, inviting the user to "Confirm your identity now" following the message:
"Dear User,
Your Facebook account must be confirmed today in order to avoid disabling! This process is quick and must be done by all of our users as an extra security measure. If you fail to confirm your account today it will be limited and then disabled!"Complaint, Annex 12.
It can be presumed that the user would be requested to disclose personal and confidential information such as password, address, telephone, email address, and perhaps even social security number in order to "confirm" the user's "Facebook account."
This domain name is now pointing to pages displaying the following statement:
"This website is misleading:
This page has been blocked as it may cause you to conduct dangerous actions, such as installation of software or disclosure of personal information like your password or your bank card number."
Complaint, Annex 11.
4) - This domain name is now pointing to pages displaying the following statement:
"This website is misleading:
This page has been blocked as it may cause you to conduct dangerous actions, such as installation of software or disclosure of personal information like your password or your bank card number." Complaint, Annex 11.
5) - This domain name resolves to an error page and appears to be passively held by Respondent. 6. Parties' Contentions A. Complainant
Complainant alleges that each of the five disputed domain names is confusingly similar to Complainant's FB registered service mark in that four of the domain names incorporate the FB mark and that one of the domain names includes the FB mark as part of the string "fbook," which more directly points to the source of the FB mark, the world-famous FACEBOOK trademark. Complainant asserts that it has never authorized Respondent to use the disputed domain names or to use any of its trademarks or service marks and that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant contends that four of the disputed domain names have been used to deceive users into believing that the disputed domain names resolved to web pages maintained by Complainant, and that three of the disputed domain names have been used for the purposes of "phishing" for personal information from the user. Complainant asserts that the remaining disputed domain name has been passively held by Respondent and that there is no conceivable legitimate use that Respondent could make of the fifth disputed domain name. B. Respondent
Respondent did not reply to Complainant's contentions. 7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall 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 directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith." A. Identical or Confusingly Similar
Each of the disputed domain names incorporates Complainant's famous FB service mark and each includes words that suggest that it is related to the FACEBOOK online social networking services, including such English words as "record," "notify," "mobile, "fbook" and "policies." Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to Complainant's FB service mark. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In the present case Complainant alleges, based on the facts set out above, that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Respondent registered each of the disputed domain names in May 2018, long after Complainant had become famous not only in the Boston area and in the United States, but also around the world, for its online social networking services. Facebook was famous worldwide at the time that Respondent registered the disputed domain names, as were Complainant's FACEBOOK and FB trademarks.
Respondent provided false contact information to the Registrar in the form of a non-existent address.
Three of the disputed domain names (, , and ) have been used to point to a fake "Facebook account confirmation" page in the English language. Three of the disputed domain names (, , and ) have been used to point to "phishing" pages which asked a user to "confirm" the user's identity for purposes of confirming the user's facebook account at the risk of the user having his or her account disabled. Three of the disputed domain names (, , and ) have been used to resolve to web pages which state that the page had been blocked because it might cause the user to disclose "personal information like your password or your bank card number." The Panel finds that the disputed domain names , , , and have been registered and are being used in bad faith.
One of the disputed domain names, , has been passively held. Based on the facts that four other similar names domain names registered by Respondent at or about the same time as the registration of have been found to have been registered and used in bad faith, that all of the disputed domain names, contain the service mark FB, that in each instance false information was provided to the Registrar, and that it is difficult to conceive of a use of the disputed domain name that would not be in bad faith given the fame of Complainant and its service marks (see, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), the Panel finds that the disputed domain name has been registered and is being used in bad faith. 8. 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.
M. Scott Donahey
Sole Panelist
Date: September 26, 2018
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