The Complainant is Facebook Inc., United States of America (the “United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jeremy Williams, 3 Man Group, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2019, 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 July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not submit any response by July 25, 2019. Accordingly, the Center notified the Respondent’s default on July 26, 2019. The Respondent submitted a late Response on July 30, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on August 6, 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 provides online social networking services used by over 2 billion people each month and owns a number of registrations for the FACEBOOK trademark, including U.S. Registration No. 3041791, issued on January 10, 2006 (alleging a date of first use in commerce in 2004). The Respondent registered the disputed domain name on March 29, 2013. The disputed domain name does not resolve to an active website, but it does have mail exchanger records (“MX records”) attached to it, indicating that it can be used for email correspondence. The Complainant presented evidence that the Respondent used to be or is the registrant of other domain names that incorporate third-party trademarks such as , , , and . 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent filed a Response several days after the due date under the Rules for responding had passed. Under the Rules, at paragraph 14(b), the Panel could consider it appropriate to disregard the late-filed response, because there are no exceptional circumstances that excused the Respondent’s noncompliance with the due date. In fact, in an email to the Center accompanying his late-filed Response, the Respondent stated that he was “not requesting special consideration” for filing late, but that responding in a timely manner “fell behind other priorities,” even though he “did have a chance to respond.”
Though the Panel could ignore the Response altogether, in the interest of completeness, the Panel has reviewed the filing and takes note of the following arguments the Respondent raised:
- The Complainant could have asked for the disputed domain name directly, expressed a “positive solution instead of an international claim,” and could have offered to cover the Respondent’s direct expenses.
- The Respondent has thoroughly studied and understands the “Rules of Bad Faith” and states unequivocally that he has not broken these rules. He claims to not be engaged in pursuing, among other things, “money or mischief”.
- The Respondent conceded that the Complainant had established the first and second elements under the Policy.
- The Respondent consented to the remedy requested by the Complainant. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark FACEBOOK. The mark is subject to registrations that predate registration of the disputed domain name, and has been in widespread use for around a decade and a half. The disputed domain name contains the Complainant’s mark in its entirety and is in this manner identical or confusingly similar to the FACEBOOK mark. The additional word “bitcoin” does not avoid the confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). And the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of comparing the disputed domain name with the Complainant’s mark under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts, among other things, that:
- The Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise.
- The Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
- The fact that MX records are attached to the disputed domain name suggests that the Respondent may be using the disputed domain name to send emails, which cannot be bona fide as any email address using the disputed domain name could only be used for confusing purposes.
- The Respondent cannot conceivably claim that he is commonly known by the disputed domain name, in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the FACEBOOK trademark and its exclusive association with the Complainant.
- The Respondent cannot assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy.
Because the Respondent failed to introduce sufficient evidence to rebut this prima facie showing (he actually conceded he lacked any rights or legitimate interests), the Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith
Bad Faith Registration
The Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world, having rapidly acquired considerable goodwill and renown worldwide, and has been continuously and extensively used since 2004. Prior UDRP panels have recognized the strength and renown of the Complainant’s trademark. See, for instance, Facebook, Inc. v. He Wenming,WIPO Case No. DCC2013-0004 (the FACEBOOK trademark enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety in the world for its online social networking services). Given the Complainant’s renown and goodwill worldwide, it would be implausible for the Respondent to argue that he did not have knowledge of the Complainant’s FACEBOOK trademark at the time of registration of the disputed domain name in 2013. Moreover, the Complainant’s trademark rights significantly predate the registration date of the disputed domain name. Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of the Complainant’s rights in the FACEBOOK trademark, given the nature of the Internet and the Complainant’s explosive popularity worldwide. See Facebook, Inc. v. He Wenming, supra.
The Panel therefore finds that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. Prior UDRP panels have held that actual and constructive knowledge of a complainant’s rights at the time of registration of a disputed domain name constitutes strong evidence of bad faith. See WIPO Overview 3.0, section 3.2.2. See also eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (actual or constructive knowledge of the Complainant’s rights in the trademarks is a factor supporting bad faith); E. & J. Gallo Winery v. Oak Investment Group,WIPO Case No. D2000-1213 (finding bad faith where the respondent “knew or should have known” of the complainant’s trademark).
As a result of the well-known character of the FACEBOOK trademark, the Panel finds that when confronted with a combination of the trademark together with the word “bitcoin”, many Internet users would be confused and assume that the disputed domain name is in some way connected with the Complainant. By integrating the Complainant’s well-known FACEBOOK trademark in its entirety, the disputed domain name carries a high risk of implied affiliation with the Complainant. See Facebook Inc. v. Protection of Private Person, REG.RU Protection Service / Nikita Sakhnenko,WIPO Case No. D2019-0870 () (panel found there to be no plausible explanation for the respondent’s choice of the disputed domain name other than the respondent’s intent to profit off the fame of the Complainant’s well-known FACEBOOK trademark). Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation between the disputed domain name and the Complainant.
Therefore, the Panel finds that it is unlikely that the Respondent could have registered the disputed domain name for legitimate purposes other than to somehow create an impression of association between the disputed domain name and the Complainant. See WIPO Overview 3.0, section 3.1.1 (“Particularly where the disputed domain name at issue is identical or confusingly similar to a highly distinctive or famous mark, panels have tended to view with a degree of skepticism a respondent defense that the disputed domain name was merely registered for legitimate speculation as opposed to targeting a specific brand owner”.)
The Panel also takes note that the Respondent is or used to be the registrant of other disputed domain names incorporating well-known third party trademarks, such as , , , and . The Complainant argues that this evidence establishes a pattern of conduct by the Respondent that has sought to prevent the owners of the trademarks from reflecting their trademarks in corresponding domain names in accordance with paragraph 4(b)(ii) of the Policy. The Panel declines to find, on these facts, that the Respondent’s conduct fits the pattern described in paragraph 4(b)(ii) of the Policy. Though there appears to be a pattern of registering disputed domain names, the evidence does not clearly show that the objective of the pattern was to prevent the owners of the trademarks from reflecting their trademarks in corresponding domain names.
Bad Faith Use
The disputed domain name does not resolve to an active website and there is no evidence that it has otherwise been used by the Respondent at any time since its registration. Nevertheless, passive holding of the disputed domain name does not prevent a finding of bad faith. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the disputed domain name may be put. See WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainant’s FACEBOOK trademark is distinctive and is strongly associated with the Complainant. Furthermore, the Complainant enjoys a global reputation, its products and services being used by over 2 billion unique users every month.
The Panel agrees with the Complainant’s assertion that the Respondent’s likely use of the disputed domain name to send confusing or even fraudulent emails (as shown by the MX records) constitutes strong evidence of bad faith use. See Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyP / Nicolas Kerry,WIPO Case No. D2017-0046.
Finally, given the renown of the Complainant’s FACEBOOK trademark worldwide, it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent who has no affiliation with the Complainant (or by a third party) that would not be illegitimate, as any such use would inevitably result in misleading diversion of consumers and taking unfair advantage of the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. See also Philip Morris USA Inc. v. Juan Perez,WIPO Case No. D2018-0389.
The Panel has considered the Respondent’s assertions that he did not register and has not used the disputed domain name in bad faith, but finds them unpersuasive.
For the above reasons, the Panel finds that the Complainant has established the third UDRP element. 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 name be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: August 20, 2019
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