The Complainant is Facebook, Inc., United States of America (“United Sates”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Kim Changho, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with ProNamed LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 3, 2019.
The Center verified that the Complaint together with the amended 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 July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on August 13, 2019. 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 is the well-known provider of online social networking services headquartered in Menlo Park, California, Unites States. The Complainant’s service was originally developed in 2004 and since then has expended so that it has (as of September 2018) some 2.27 billion monthly active users.
The Complainant trades as FACEBOOK and also uses a shorthand version of its name in the form FB, which is registered as a trademark in various jurisdictions around the world (for example, European Union Trade Mark No. 008981383, FB, registered on August 23, 2011 and United States Trademark No. 4782235, FB, registered on July 28, 2015.
The Domain Name was registered on May 3, 2019. 5. Parties’ Contentions A. Complainant
The Complainant alleges the following:
The Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark. The Domain Name incorporates a misspelling of the Complainant’s trademark whereby the Domain Name omits the letters “ace” from the Complainant’s FACEBOOK trademark. The Complainant submits that this in an intentional misspelling on the part of the Respondent in order to create confusion as to the association of the Domain Name with the Complainant.
In addition, the Complainant submits that the Domain Name is confusingly similar to the Complainant’s FB trademark, as the Domain Name subsumes the Complainant’s FB trademark as its leading element, with the addition of the letters “ook” following the Complainant’s trademark to form the word “book”. The Complainant’s FB trademark is clearly recognizable in the Domain Name.
The Complainant also alleges the following:
The Complainant adds that the Respondent has no rights or legitimate interests in respect of the Domain Name as it is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy.
The Respondent is not known by the Domain Name, nor has it been licensed or otherwise allowed to make any use of the Complainant’s trademark. Prior to notice of this dispute, the Respondent cannot assert it was using the Domain Name in connection with a bona fide offering of goods nor can the Respondent assert it has made or is currently making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, given it was previously associated with a phishing scam.
According to the Complainant; the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent is using the Domain Name to send emails to Facebook users from the email address “[...]@”, which purport to be sent by the Complainant and offering a prize of USD 1,000,000,00 for the 2019 Edition Facebook promotion. The Complainant is offering no such promotion.
Furthermore; the Complainant adds that the Domain Name is being used as part of a fraudulent scheme to impersonate the Complainant. Specifically, the Respondent is attempting to impersonate the Complainant’s founder and chief executive officer, in an effort to extract confidential personal information from unsuspecting Facebook users, which may in turn be used to engage in further fraudulent acts.
Moreover, given the renowned popularity of the Complainant’s trademark, it is impossible to conceive of any use by the Respondent that would be legitimate.
The Complainant asserts that the Domain Name was registered and is being used in bad faith.
According to the Complainant, given the Complainant’s renowned and goodwill worldwide, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s FACEBOOK and FB trademarks at the time of registration of the Domain Name in 2019.
The Complainant adds that, the Domain Name was previously used by the Respondent in connection with phishing schemes. The Domain Name is used as part of a broader fraudulent scheme to induce Facebook users into self-compromising their accounts by disclosing their confidential usernames and passwords, or their banking information, potentially exposing them to acts of financial fraud.
Finally, the listing of the Domain Name for sale may be viewed as further evidence of the Respondent’s bad faith within the meaning of paragraph 4(b)(i) of the Policy, being yet another means for the Respondent to potentially profit from the illegitimate use of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name 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
The Domain Name contains the Complainant’s trademark FB in its entirety and a misspelling of the Complainant’s other trademark FACEBOOK.
The Panel concludes that there is an obvious misspelling of the Complainant’s FACEBOOK trademark and the Panel is of the opinion that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark. The Panel also concludes that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark, as it is clearly recognizable in the Domain Name.
The generic Top-Level Domain (“gTLD”) in this case “.org”, generally is not taken into consideration when examining the confusing similarity between a complainant’s trademark and the domain name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademarks FB and FACEBOOK in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by using the Domain Name. Nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complaint suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel is of the opinion that when the Respondent registered the Domain Name he knew that FB and FACEBOOK were the trademarks of the Complainant and registered the Domain Name to take advantage of the trademarks; accordingly finds that the Respondent registered the Domain Name in bad faith.
The use of the Domain Name as part of a phishing scam obviously constitutes use in bad faith.
Moreover, the Domain Name is being used as part of a fraudulent scheme to impersonate the Complainant. The Respondent is attempting to impersonate the Complainant’s founder and chief executive officer, in an effort to extract confidential personal information from unsuspecting Facebook users, which may in turn be used to engage in further fraudulent acts.
There is no suggestion that the Respondent had any intention of legitimate use, that he enjoys a legitimate connection to the Domain Name or that there is conceivable good faith use for the Domain Name. After examining all circumstances surrounding the registration and use of the Domain Name, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element 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 Domain Name be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Date: September 2, 2019
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