Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Darren Lazarus, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2019. On September 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Response was filed with the Center on October 21, 2019. The Center appointed Scott R. Austin as the sole panelist in this matter on November 20, 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 Complainant Facebook, Inc., one of the world’s leading providers of online social networking services, states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support: 1) that “Facebook has more than 2.32 billion monthly active users and 1.47 billion daily active users on average worldwide”; 2) that Complainant’s “main website www.facebook.com [Annex reference omitted] is currently ranked as the 3rd most visited website in the world and in the United States, according to information company Alexa”; 3) that “Complainant’s FACEBOOK trade mark [(the “FACEBOOK Mark”)] is currently one of the world’s most famous online trade marks”, ranking 9th in 2018 in Interbrand’s Best Global Brands report; 4) that “Complainant is the owner of numerous domain names consisting of or including [the FACEBOOK Mark] under various [generic Top-Level Domains (‘gTLDs’)] as well as under various [country code Top-Level Domains (‘ccTLDs’)]”; 5) that it “has also made substantial investments to develop a strong presence online by being active on various social media forums. For instance, Facebook’s official page on Facebook has over 213 million ‘likes’. In addition, Facebook has 13.5 million followers on Twitter”; 6) that “[a]t various points in 2018 and 2019, several prominent news outlets released stories relating to a possible cryptocurrency project at [Complainant’s business]. This culminated in June 2019 at which point [Complainant] announced plans to partner with various institutions in order to create a digital token system under the name ‘Libra’”; 7) that “Complainant has secured ownership of trade mark registrations for [the FACEBOOK Mark] in many jurisdictions throughout the world”, including inter alia the following: a) “United States Trademark Registration No. 3,041,791, FACEBOOK, registered on January 10, 2006”; b) “United States Trademark Registration No. 3,122,052, FACEBOOK, registered on July 25, 2006”; c) “European Union Trade Mark No. 005585518, FACEBOOK, registered on May 25, 2011”; d) “European Union Trade Mark No. 009151192, FACEBOOK, registered on December 17, 2010”; and e) “International Registration No. 1075094, , registered on July 16, 2010”. 8) that the disputed domain names were registered by Respondent on February 11, 2017 and at the time of filing, the disputed domain names resolved to “coming soon” parking pages. Complainant is not aware of Respondent having made any active use of the disputed domain names since their registration. 9) that Complainant “sent a cease-and-desist letter to the Respondent on July 31, 2019, by email and by registered post in relation to the [disputed domain names …] putting the Respondent on notice of its rights and requesting transfer of the abovementioned domain names”. 10) that “[h]aving received no reply, the Complainant sent an email reminder to the Respondent” on September 5, 2019. 11) that on September 5, 2019, the Respondent’s representative sent an email communication in reply to the Complainant’s cease-and-desist letter, declining to transfer the domain names to the Complainant, asserting inter alia: “Mr. Lazarus is an active participant in the finance industry, and has a particular interest in the cryptocurrency markets. Additionally, Mr. Lazarus is an active investor in ‘incubator’/start-up enterprises. Mr. Lazarus intends to, among other things, create chatrooms, forums and/or commentary newsletters relating to the cryptocurrency markets (including without limitation bitcoin) and how Facebook could potentially play a role in those markets/industries.” 12) that “no amicable solution could be reached [with Respondent], the Complainant submits the present Complaint requesting transfer of the [disputed domain names], in order to protect its legitimate business interests and the rights of its user community”. 5. Parties’ Contentions A. Complainant 1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights because: a) The FACEBOOK Mark is a famous trademark world wide through its long and extensive use as “Complainant has secured ownership of trade mark registrations for FACEBOOK in many jurisdictions throughout the world, evidenced by the numerous registrations submitted by Complainant, including, but not limited to, the registrations referenced under Section 4 above”. b) “The [disputed domain names] incorporate the Complainant’s [FACEBOOK Mark] in its entirety with the addition of the terms ‘bitcoin’ and ‘cryptocurrency’. Prior panels have held that: ‘when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy’”. c) “The addition of the terms ‘bitcoin’ and ‘cryptocurrency’ does not prevent a finding of confusing similarity as the Complainant’s [FACEBOOK Mark] is still recognisable within the [disputed domain names]”. d) “The addition of the gTLDs may be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration”. 2. Respondent has no rights or legitimate interests in the disputed domain names because: a) 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 Mark] in a domain name or otherwise”; b) The disputed domain names each resolve to GoDaddy parking pages, and therefore, “[t]he Respondent cannot assert that, prior to any notice of this dispute, he was using or had made demonstrable preparations to use, the [disputed domain names] in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy”; c) There is no evidence that Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy because “[t]he Respondent’s name ‘Darren Lazarus’ bears no resemblance to the [disputed domain names]” and “[t]here are no other indicia that the Respondent is commonly known by the [disputed domain names]”; d) Respondent is not making a legitimate noncommercial or fair use of the disputed domain names pursuant to paragraph 4(c)(iii) of the Policy because “[a] claim of legitimate noncommercial or fair use of a domain name must be supported by actual use”; and e) The assertions by Respondent’s legal representative that Respondent’s registration of the disputed domain names is protected under principles of free speech fails for lack of evidence of active use of any content or commentary on Complainant’s proposed cryptocurrency activities. 3. The disputed domain names have been registered and are being used in bad faith because: a) “The Complainant’s [FACEBOOK Mark] is highly distinctive and famous throughout the world. It has been used continuously and extensively since 2004 in connection with the Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide”; b) “Prior panels have repeatedly recognized the strength and renown of the Complainant’s trade mark, and have ordered the transfer of disputed domain names to the Complainant”; c) “Respondent could not plausibly argue that he did not have knowledge of the Complainant’s [FACEBOOK Mark] at the time he registered the [disputed domain names] in 2017, noting that the [disputed domain names] were registered at a time when the Complainant’s social network had already acquired over 2 billion monthly users worldwide”; d) “Respondent did not deny prior knowledge of the Complainant or its rights in the [FACEBOOK Mark]”, in reply to the Complainant’s cease-and-desist letter; e) “Complainant submits that by registering the [disputed domain names] […] the Respondent has registered the [disputed domain names] in order to prevent the Complainant from reflecting its [FACEBOOK Mark] in corresponding domain names, and that the Respondent has engaged in a pattern of such conduct, amounting to bad faith registration pursuant to paragraph 4(b)(ii) of the Policy”; f) “Complainant submits that the present non-use of the [disputed domain names] (resolving to GoDaddy parking pages lacking substantive content), would not prevent a finding of bad faith under the doctrine of passive holding”; and g) Given the circumstances of Complainant’s famous mark, Respondent’s lack of evidence of good faith noncommercial or fair use, an abusive pattern of registration of at least three domain names targeting Complainant’s FACEBOOK Mark, “Complainant cannot conceive of any bona fide use that the Respondent could make of the [disputed domain names] that would not result in the creation of a misleading impression of association with the Complainant”. B. Respondent Respondent contends that upon notice of the Complaint, “Respondent advised Complainant that he wished to transfer the 3 [disputed domain names] to Complainant”, but that “[t]o the extent a response is required, Respondent notes that he had a plan to develop the domain names without targeting Complainant’s trademark and did not act in bad faith”. Respondent “consents to an immediate settlement, transfer and termination of the action”. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of each disputed domain name; and (iii) each disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Consent to Transfer As a threshold matter, the Panel must decide whether to address the conditions for transfer under paragraph 4(a) of the Policy, or rather to grant a “unilateral transfer” as requested by Respondent. Prior decisions under the Policy illustrate that it is within the Panel’s discretion to choose either approach. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.10, (In some cases, despite a respondent’s consent to a unilateral transfer, “a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits”). Section 4.10 of the WIPO Overview 3.0 provides that one of the scenarios in which a panel may find it appropriate to proceed is where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct. Although the Panel has the authority to order a transfer based on Respondent’s consent without further analysis, the Panel has decided to address the merits. It is this Panel’s view that circumstances warranting a mere order of transfer without more are not present in this case, and declaring that the requisite elements are deemed to have been met due to Respondent’s consent to transfer, is likewise inappropriate here, where Respondent explicitly denies having acted in bad faith. As discussed below, Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which Respondent has no rights, and then attempting to avoid a decision on the merits. Considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and consideration of the three requisite elements under paragraph 4(a) of the Policy. B. Identical or Confusingly Similar Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to its famous FACEBOOK Mark used by Complainant in connection with its online social networking services. Complainant contends that the disputed domain names are confusingly similar to its FACEBOOK Mark in which Complainant has rights because “[t]he [disputed domain names] incorporate the Complainant’s [FACEBOOK Mark] in its entirety with the addition of the terms ‘bitcoin’ and ‘cryptocurrency’. Prior panels have held that: ‘when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy’.” Prior UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a gTLD to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy paragraph 4(a)(i). See, e.g., Facebook Inc. v. Jeremy Williams, 3 Man Group, WIPO Case No. D2019-1535 (disputed domain name Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy. Such analysis may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; see also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” One panelist noted in a recent decision under the Policy citing section 1.7 of the WIPO Overview 3.0, “That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue” Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633; see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”) Complainant’s FACEBOOK Mark is readily recognizable as incorporated in its entirety into each of the disputed domain names here and for that reason this Panel finds the disputed domain names confusingly similar to the FACEBOOK Mark in which the Complainant has rights. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element”, WIPO Overview 3.0, section 2.1. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain names; see Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because: a) “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 Mark] in a domain name or otherwise”; b) The disputed domain names each resolve to GoDaddy parking pages, and therefore, “[t]he Respondent cannot assert that, prior to any notice of this dispute, he was using or had made demonstrable preparations to use, the [disputed domain names] in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy”; c) There is no evidence that Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy because “[t]he Respondent’s name ‘Darren Lazarus’ bears no resemblance to the [disputed domain names]” and “[t]here are no other indicia that the Respondent is commonly known by the [disputed domain names]”; d) Respondent is not making a legitimate noncommercial or fair use of the disputed domain names pursuant to paragraph 4(c)(iii) of the Policy because “[a] claim of legitimate noncommercial or fair use of a domain name must be supported by actual use”; and e) The assertions in correspondence to Complainant by Respondent that its registration of the disputed domain names is protected under principles of free speech fails for lack of evidence of any active use of any content or commentary on cryptocurrency, including on Complainant’s proposed cryptocurrency activities. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, stating, without challenge by Respondent, that Respondent has no license right or other authorization from Complainant “to make any use of its [FACEBOOK Mark] in a domain name or otherwise”. Complainant has submitted evidence showing that the Respondent’s name “Darren Lazarus” as the registrant in the WhoIs record made available through the involved Registrar, which name bears no resemblance to the disputed domain names. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary that it has been commonly known by any of the disputed domain names. The Panel finds in review of the WhoIs record and other evidence submitted by Complainant that Respondent is not commonly known by any of the disputed domain names. See Marriott International, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). It is generally regarded as prima facie evidence if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. The Panel has found above that the disputed domain names are confusingly similar to Complainant’s FACEBOOK Mark. The Panel accepts the Complainant’s contentions that the Respondent is not commonly known by any of the disputed domain names and that the Respondent has never been authorized by the Complainant to use the Complainant’s FACEBOOK Mark. The Panel is therefore satisfied that the Complainant has provided sufficient prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain names. It remains for the Panel to determine whether the Respondent has rebutted Complainant’s prima facie case to show that it has rights or legitimate interests in the disputed domain names. Complainant has submitted evidence in the record to support its contention that the disputed domain names each resolve to “coming soon” parking pages. Complainant contends that therefore, Respondent cannot assert that prior to any notice of this dispute he was using or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. The Panel agrees with Complainant and finds that Respondent has failed to show demonstrable preparations to use any of the disputed domain names for the purposes of running a bona fide offering of goods or services as envisioned by paragraph 4(c)(i) of the Policy. Based on this same evidence, the Panel finds that neither is Respondent making any noncommercial or fair use of the disputed domain names. Indeed, it is clear from Complainant’s evidence submitted that Respondent’s has made no use of the disputed domain names, notwithstanding the correspondence in response to Complainant’s demand letter by Respondent’s purported legal representative, noticeably absent from the filing of the Response, suggesting that Respondent’s registration of the disputed domain names was protected under principles of free speech. This Panel, therefore, cannot find Respondent’s nonuse to be a noncommercial or fair use under these circumstances. See WIPO Overview 3.0, section 2.7.1 (claim of legitimate noncommercial or fair use of a domain name must be supported by actual use). Considering all of the circumstances, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any relevant evidence to rebut the Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain names and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). The Panel finds that Respondent has registered the disputed domain names in bad faith for at least the following reasons. The Panel finds based on the evidence submitted that Complainant’s FACEBOOK Mark is highly distinctive and famous throughout the world. It has been used continuously and extensively since 2004 in connection with the Complainant’s social network services, having rapidly acquired considerable goodwill and renown worldwide. Prior UDRP panels have repeatedly recognized the strength and renown of Complainant’s FACEBOOK Mark in deciding in favor of transfer of disputed domain names to Complainant. See, e.g., Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145 (longstanding and public use of FACEBOOK Mark would make it disingenuous for respondent to claim it was unaware that registration of disputed domain names would violate complainant’s rights); Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan,WIPO Case No. D2015-0614 (transfer granted under finding of bad faith where the “Panel is convinced that the Respondent must have been well-aware of the Complainant’s famous FACEBOOK trademark when it registered the disputed domain name in April 2014”); see also WIPO Overview 3.0, section 3.2.2; see, e.g., eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks is a factor supporting bad faith). Given these circumstances, the Panel finds that Respondent could not plausibly argue that he did not have knowledge of Complainant’s FACEBOOK Mark at the time he registered the disputed domain names in 2017, and like prior UDRP panels in the decisions cited above, this Panel is convinced that Respondent was well aware of Complainant’s mark when it registered the disputed domain names and did so in bad faith. Similarly, given the number of disputed domain names registered by Respondent and the timing of such registrations over a decade after Complainant began using its FACEBOOOK Mark, all three of which disputed domain names encompass Complainant’s entire mark appending the same cryptocurrency terms and lie dormant in anticipation as Complainant develops its business in the cryptocurrency market, the Panel believes these factors warrant a finding that Respondent has engaged in an abusive pattern of registration of domain names targeting Complainant’s FACEBOOK Mark, such conduct amounting to bad faith registration pursuant to paragraph 4(b)(ii) of the Policy. The Panel also finds that Respondent’s use of the disputed domain names is in bad faith. Complainant submits that the present nonuse of the [disputed domain names], “resolving to GoDaddy parking pages lacking substantive content” supports a finding of bad faith under the passive holding doctrine developed under the Policy. See WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Section 3.3 of the WIPO Overview 3.0 provides: “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 domain name may be put.” Given the circumstances of Complainant’s famous mark, Respondent’s lack of evidence of good faith noncommercial or fair use, an abusive pattern of registration of at least three domain names targeting Complainant’s FACEBOOK Mark. “Complainant cannot conceive of any bona fide use that the Respondent could make of the [disputed domain names] that would not result in the creation of a misleading impression of association with the Complainant.” The Panel agrees and finds that there can be no plausible use to which the disputed domain names may be put by Respondent other than to profit off the fame of Complainant’s FACEBOOK Mark through use of the disputed domain names to create a false association with Complainant. See Facebook Inc. v. Protection of Private Person, REG.RU Protection Service / Nikita Sakhnenko,WIPO Case No. D2019-0870. See WIPO Overview 3.0, section 3.3. The Panel finds Respondent has registered and used the disputed domain names in bad faith and Complainant has satisfied paragraph 4(a)(iii) 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 disputed domain names, Scott R. Austin
Sole Panelist
Date: December 10, 2019
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