The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is DomainsByProxy, LLC, United States / Muhammed Arslan, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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 September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2019. The Center appointed Knud Wallberg as the sole panelist in this matter on October 15, 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 was founded in 2004 and is the world’s leading provider of online social networking services via its website available at “www.facebook.com”. The Complainant’s social network, Facebook has approximately 2.37 billion monthly active users and 1.56 billion daily active users on average worldwide. The Complainant is the owner of numerous trademark registrations in the term FACEBOOK in many jurisdictions throughout the world, including International Trademark Registration No. 1075094, FACEBOOK, registered on July 16, 2010, in international classes 9, 35, 36, 38, 41, 42, and 45, in which Turkey is designated. The Complainant is the owner of numerous domain names consisting of or including the FACEBOOK trademark under various generic Top-Level Domains (“gTLDs”) as well as under various country code Top-Level Domains. The disputed domain name was registered on June 17, 2019. The disputed domain name previously pointed to a website that purportedly provided information on the Complainant’s potential digital currency Libra by mimicking the official website of the Libra project. The disputed domain name currently does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights since it incorporates the Complainant’s FACEBOOK trademark in its entirety together with the letter “x” and the descriptive term “coin”. The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Complainant has no prior business relationship with the Respondent whatsoever. The Respondent cannot claim to be using the disputed 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 disputed domain name was thus registered by the Respondent on June 17, 2019, the day before Libra was revealed when there was much speculation in the media about the nature of Facebook’s potential digital currency. The disputed domain name then pointed to a fraudulent webpage mimicking the website available at “www.libra.org/en-US/”. The said website prominently displayed the Libra logo, images, and text copied from the official Libra website. The website associated with the disputed domain name also contained links purportedly offering the sale of the digital currency Libra, which indicates that the disputed domain name was most probably intended to be used in connection with a fraudulent digital currency scheme. On July 18, 2019, the Complainant’s lawyers sent a request to the Registrar, asserting the Complainant’s rights in the term FACEBOOK and requesting the suspension of the disputed domain name. Shortly after the website associated with the disputed domain name displayed a message: “website coming soon”. The Complainant submits that the fact that the disputed domain name currently points to a webpage with this message constitutes passive holding, which does not constitute a legitimate or a bona fide offering of goods or services under the Policy. The Complainant finally submits that the Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world. It has been continuously and extensively used since 2004 in connection with the Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide. The Complainant therefore submits that it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s FACEBOOK trademark at the time of registration of the disputed domain name. The Complainant further submits, that the disputed domain name is used in bad faith. The disputed domain name previously pointed to a website having the same “look and feel” as Libra’s official website and which contained links purportedly offering the sale of the digital currency Libra. The Complainant claims that this makes it clear that the disputed domain name was being used for the sole purpose of misdirecting Internet users, based on the confusion with the Complainant’s trademark and name, to the Respondent’s website for commercial gain. The Complainant finally submits that the fact that the disputed domain name currently does not resolve to an active webpage does not prevent a finding of the Respondent’s bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a 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; (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. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. On the contrary, the Panel considers that the Respondent’s recent past use of the disputed domain name for a website having the same “look and feel” as the official Libra website and which contained links purportedly offering the sale of the digital currency Libra, is a clear indication that no such rights or legitimate interests exists. Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, including the evidence on record of the use and worldwide reputation of the Complainant’s trademark FACEBOOK, the distinctive nature of this mark and the fact that the disputed domain name was registered the day before the Complainant’s plan for a potential digital currency was revealed, when there was much speculation in the media about the Complainant’s potential digital currency, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel therefore finds that the disputed domain name was registered in bad faith. In view of the Respondent’s past use of the disputed domain name for a website having the same “look and feel” as the official Libra website and which contained links purportedly offering the sale of the digital currency, the fact that disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith use under paragraph 4(a)(iii) of the Policy. See section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark FACEBOOK and the gTLD “.com”, that no Response has been filed and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 Knud Wallberg
Sole Panelist
Date: October 29, 2019
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