The Complainant is Facebook Inc. of Menlo Park, California, United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is June Kimchi c/o Dynadot of San Mateo, California, US. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2018, 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 October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 13, 2018.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 30, 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 was established in 2004 in the US and is one of the best known Internet companies in the world. It conducts business under its FACEBOOK service mark, which is registered with many jurisdictions around the world, including with the Mexican Trademark Office (“IMPI”) (e.g., Registration No. 1255617; registered on December 5, 2011) and with the United States Patent and Trademark Office ("USPTO") (e.g., Registration No. 3041791; registered on January 10, 2006).
The disputed domain names, , and , were all registered on June 23, 2005. The disputed domain names were acquired by the Respondent in 2009, and resolve to websites that request either updates for use of computer operating systems or personal information relating to the offering of goods. 5. Parties’ Contentions A. Complainant
- Founded in 2004, the Complainant is a US company and the world leader in the provision of online social networking services. The Complainant has nearly two billion Internet users worldwide, and is the most downloaded application for cellular telephone use in the world. As a result, the Complainant’s FACEBOOK service mark has gained considerable global reputation and goodwill, and is one of the most famous online marks in the world.
- The Complainant has registered its FACEBOOK mark in many jurisdictions throughout the world, including in the US and Mexico. The Complainant conducts operations through its principal domain name, , as well as many similar domain names.
- The disputed domain names, , and , are confusingly similar to the FACEBOOK service mark. All three of the disputed domain names are simple misspellings of the Complainant’s mark and are exactly the same length as that mark. The confusing similarity is not affected by the addition of the generic Top-Level Domain (“gTLD") “.com”.
- The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not a licensee of the Complainant and has not been authorized to use the FACEBOOK mark for any purpose. The disputed domain names resolve to various websites that either require updates to computer operating systems, or that request personal information related to the acquisition of cell phones. This use is likely designed to spread computer malware or to “phish” for personal information that would illegitimately benefit the Respondent. Therefore, the disputed domain names are not being used for a bona fide offering of goods or services.
- It is not reasonable to believe that the Respondent is commonly known by any of the disputed domain names. Moreover, the use to which the disputed domain names are being put, as described above, cannot be considered a legitimate noncommercial or fair use of those disputed domain names.
- The disputed domain names were registered and are being used in bad faith. Due to the worldwide fame of the Complainant’s mark, it is inconceivable that the Respondent was unaware of that mark, and the Complainant’s rights therein, when it acquired the disputed domain names. Also, by registering the three disputed domain names, along with another infringing domain name, , the Respondent has engaged in a pattern of illegitimately registering and using domain names for the purpose of depriving the Complainant of reflecting its mark in corresponding domain names.
- The Respondent’s bad faith registration of the disputed domain names is further demonstrated by its website offer to sell the disputed domain names for prices that far exceed the out-of-pocket registration costs associated with those disputed domain names. Moreover, the use of the disputed domain names to spread malware or engage in information phishing efforts constitute bad faith use of the disputed domain names. Finally, the Respondent has submitted false WhoIs data in connection with the registration of the disputed domain names, which is indicative of bad faith registration and use of the same. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may find in favor of the Complainant and order a transfer of the disputed domain names, , and , providing the Complainant can establish that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names have been registered and are being used in bad faith.
Because the Respondent failed to submit a Response to address the contentions set forth in the Complaint, the Panel will base its decision on the Complainant’s reasonable and undisputed assertions, drawing such inferences as the Panel considers appropriate. See, The American Automobile Association, Inc. v. PSI ,WIPO Case No. D2008-1931 (“The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true.”); and Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). A. Identical or Confusingly Similar
By presentation of evidence that its FACEBOOK service mark has been in continuous use for more than a decade, and that the mark has been registered in Mexico and in the US, the Complainant has convinced the Panel of the Complainant’s ownership rights in that mark. See, Proeza, S.A. de C.V. v. Domain Admin,WIPO Case No. D2018-0535 (“The Panel concludes that Complainant has trademark rights in the mark PROEZA through registration in Mexico.”); and Bachoco, S.A. de C.V. v. Network and IT Management Ltd.,WIPO Case No. D2009-1687 (“Complainant has provided evidence of registration of its BACHOCO trademark and service mark in Mexico and the United States, and substantial evidence of use in commerce in both jurisdictions [...] Complainant has established rights in the BACHOCO trademark and service mark.”).
Clearly, none of the disputed domain names, , and , are identical to the FACEBOOK service mark. However, all of the disputed domain names contain the same number of letters as that mark. The only differences with respect to that mark is that in two of the disputed domain names the letters “n” and “v”, respectively, are substituted for the letter “b”, and in the remaining disputed domain name the letters “ce” are transposed to “ec”. In the opinion of the Panel, these minor variations merely create confusing similarity between all of the disputed domain names and the Complainant’s FACEBOOK mark. Moreover, the inclusion of the gTLD “.com” does nothing to change the Panel’s finding on confusing similarity, since such a suffix is necessary for all domain names. See, Sanofi / Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193 (finding to be confusingly similar to the GENZYME trademark); and Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 (finding all of the disputed domain names, , and , to be confusingly similar to the WACHOVIA mark).
As a result, the Panel finds that the Complainant has satisfied the first element necessary under the Policy. B. Rights or Legitimate Interests
The consensus of prior Policy decisions is that a complainant need establish only a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name before shifting the burden to that respondent to come forward with clear evidence that it does possess those rights or interests. See, The Coca-Cola Company v. ICU Agency,WIPO Case No. D2008-1851 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”); and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064.
The Complainant has proved to the Panel that the disputed domain names are confusingly similar to the Complainant’s service mark. Also, the Complainant avers that the Respondent has been granted no license or authorization to use its mark for any purpose. Therefore, the Panel concludes that the Complainant has met the modest standard necessary to establish a prima facie case.
Because the Respondent has failed to come forward with evidence, the Panel will examine the record using the criteria in Policy, paragraph 4(c), to determine whether there is any reason to believe that the Respondent has rights or legitimate interests in any of the disputed domain names.
With respect to Policy paragraph 4(c)(i), the Complainant contends, supported by reasonable submissions, that all of the disputed domain names resolve to websites that purport to offer either enhanced Internet operation or cell phone products. The Panel agrees with the Complainant in drawing the inference that those offerings are likely to involve a calculated attempt by the Respondent to place malware on unsuspecting Internet user’s computers and/or to phish for Internet user personal information to effectuate some sort of scam operation. In the opinion of the Panel, those uses do not represent “a bona fide offering of goods or services” and thus fail to satisfy the requirements of Policy paragraph 4(c)(i). See, BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty,WIPO Case No. D2015-1601 (“The use of the disputed domain name to divert Internet traffic to a malware scam is not a bona fide offering of goods or services."); and Take-Two Interactive Software, Inc. v. Ciobanu Srebastian,WIPO Case No. D2013-0607 (“The site appears to constitute a so-called ‘phishing’ scheme in which user’s personal information is gathered by false pretences for unlawful purposes. It is clear that such use cannot give rise to rights or legitimate interests in the disputed domain name.”).
As for Policy paragraph 4(c)(ii), the Panel finds no reason to believe that the Respondent, June Kimchi, has been commonly known as any of the disputed domain names, so that paragraph is inapplicable to this case. Finally, since the Panel concludes that the Respondent intends to profit from the uses of the disputed domain names as described above, those uses are inconsistent with the requirements of Policy paragraph 4(c)(iii) because they do not constitute “legitimate noncommercial or fair use” of the disputed domain names. See, Yahoo! Inc. v. Ifeanyi Alusigwe, Tritonell Constructions Nig. Lt,WIPO Case No. D2017-0722 (“the Respondent is not making legitimate noncommercial or fair use of the [disputed] domain names, but rather is using the same to perpetrate a phishing scheme”); and Facebook, Inc. v. SonYong Kimi,WIPO Case No. DPH2017-0006 (“the Respondent is not making a legitimate noncommercial or fair use; on the contrary, it appears that he is using the Disputed Domain Name by redirecting to website advertising a variety of services, including computer repair services that appear to be a scam and also appears to be spreading malware.”). Consequently, the Complainant’s prima facie case is left standing.
As a result, the Panel finds that the Complainant has satisfied the second element necessary under the Policy. C. Registered and Used in Bad Faith
The Complainant contends, and the Panel agrees, that its FACEBOOK mark is famous throughout the world. Many UDRP panels have found that a disputed domain name that is confusingly similar to such a famous mark, and which is registered and used by an entity with no connection to that mark’s owner, must have been registered and used in bad faith. The Panel accepts this reasoning and concludes that the disputed domain names have been registered and are being used in bad faith. See, Facebook, Inc. v. He Wenming,WIPO Case No. DCC2013-0004 (“the Complainant and its FACEBOOK trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the world...”); and Chanel, Inc. v. B,WIPO Case No. D2000-1126 (“Given that [the] Respondent has no connection with [the] Complainant and has never been authorized by [the] Complainant to use the CHANEL mark, the very fact that [the] Respondent has registered establishes bad faith use and registration.”).
Moreover, as noted above, the Panel accepts the Complainant’s contention that the ultimate purpose for which the disputed domain names are being used is to either download various malware or to phish for personal information as methods for the Respondent to profit illegitimately. Previous Policy panels have concluded that this sort of use of a disputed domain name constitutes bad faith registration and use of the name. The Panel concurs with these conclusions and determines that the Respondent has acted in bad faith with respect to the registration and use of the disputed domain names. See, Wikimedia Foundation, Inc. v. Walter Gerbert,WIPO Case No. D2016-1346 (“the dissemination of malware through a predictable typo-variant is often used to steal consumer information for commercial gain and this is evidence of bad faith.”); and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093 (“Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith.”).
As a result, the Panel finds that the Complainant has satisfied the third element necessary under 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.
Dennis A. Foster
Sole Panelist
Date: December 14, 2018
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