The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Elie Njem, United States, self-represented. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 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 November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. On November 27, 2019, the Respondent requested an extension to file a Response. The Center granted the automatic 4-day Response extension until December 2, 2019. The Response was filed with the Center on December 3, 2019. The Center appointed William R. Towns as the sole panelist in this matter on December 11, 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. The Respondent submitted two additional emails on December 18 and 20, 2019. These emails are not timely and they do not disclose new and relevant information that would justify accepting them. 4. Factual Background The Complainant is well known provider of online networking services. The Complainant adopted and has used the mark FACEBOOK as an indicator of source for its services since 2004, and owns multiple registrations for the FACEBOOK mark in the United States and other jurisdictions around the world, including the following: − United States, Registration No. 3122052, registered on July 25, 2006 (first use in commerce in 2004); − European Union, Registration No. 009151192, registered on December 17, 2010; − International Registration No. 1075094, registered on July 16, 2010, designating Albania, Australia, Bahrain, Bosnia and Herzegovina, China, Croatia, Egypt, France, Georgia, Ghana, Iceland, Japan, Kenya, Montenegro, Morocco, North Macedonia, Norway, the Republic of Korea, the Russian Federation, Serbia, Singapore, Sudan, Switzerland, Turkey, Ukraine, and Viet Nam. The Complainant also is the holder of numerous domain names reflecting its FACEBOOK mark. The Complainant has experienced substantial growth since it began offering its online networking services under the FACEBOOK mark, growing from 1 million active users by the end of 2004 to 2.27 billion users as of September 2018. The Complainant’s website “www.facebook.com” is consistently ranked among most visited website in the world, and UDRP panels have recognized the Complainant’s FACEBOOK mark one of the most famous online marks in the world. See Facebook, Inc. v. Franz Bauer,WIPO Case No. D2010-1247; Facebook, Inc. v. He Wenming,WIPO Case No. DCC2013-0004; Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan,WIPO Case No. D2015-0614; Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145. The disputed domain names were registered on June 19, 2019, one day following the Complainant’s announcement of the its proposed “Libra” digital currency initiative. The disputed domain names have not been used with active websites. The Complainant upon learning of the Respondent’s registration of the disputed domain names sent a cease and desist letter to the Respondent on October 2, 2019, seeking transfer of the disputed domain names. The Complainant then followed up by a reminder sent to the Respondent on October 14, 2019. The Respondent replied to the Complainant on October 23, 2019, dismissing the Complainant’s demands as “without legal merit” and denying any bad faith. The Respondent then offered to sell the disputed domain names to the Complainant at the asking price of USD 25,000 for any one of the disputed domain names, or all of the disputed domain names for the lump sum price of USD 200,000. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s FACEBOOK mark. The Complainant observes that the Complainant’s FACEBOOK mark is clearly recognizable within the disputed domain names, and asserts that the addition of terms such as “bitcoin”, “online”, “the”, “USA” and “world” do not preclude a finding of confusing similarity under the first element of the Policy. The Complainant further notes that the generic Top-Level Domain (“gTLD”), in this case “.com”, in generally disregarded when assessing the confusing similarity of the disputed domain names to the Complainant’s mark. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, the Respondent has not been commonly known by any of the disputed domain names and has never been licensed or otherwise authorized to use the Complainant’s FACEBOOK mark. The Complainant relates that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant further emphasizes that the Respondent registered the disputed domain names within one day of the Complainant’s public announcement of its proposed “Libra” digital currency. As noted earlier, the Respondent after receiving the Complainant’s cease and desist letter sought to sell the disputed domain names to the Complainant, either for USD 25,000 apiece or all seven of the disputed domain names for USD 200,000. The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant explains that its FACEBOOK mark is highly distinctive and famous around the world, and has been continuously and extensively used since 2004. See, e.g., Facebook, Inc. v. He Wenming, supra (holding that “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 for its online social networking services”). The Complainant submits that the Respondent unquestionably had actual knowledge of the Complainant’s FACEBOOK mark when registering the disputed domain names, and asserts it would be inconceivable for the Respondent to claim that the disputed domain names were registered for any legitimate purposes. The Complainant concludes that the Respondent’s offer to sell the disputed domain names to the Complainant for upwards of USD 25,000 each is convincing proof that the Respondent registered the disputed domain names in bad faith with the singular intention of selling the disputed domain names to the Complainant or another third-party for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. The Complainant contends that the Respondent has engaged in a bad faith pattern of abusive domain name registration within the contemplation of paragraph 4(b)(ii) of the Policy, registering multiple domain names targeting the Complainant’s well-known FACEBOOK mark. The Complainant reiterates that the Respondent has not used the disputed domain names with any active websites, and asserts that the Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith given the overall circumstances of the case, particularly given the distinctiveness and renown of the Complainant’s FACEBOOK mark. The Complainant further observes that as the disputed domain names exhibit a connection with cryptocurrency or other financial services, an appreciable risk exists that the disputed domain names could be used in the future to expose Internet users to phishing schemes or other abusive behavior, citing Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564. B. Respondent The Respondent submits that the disputed domain names were registered with the intent to undertake operations in the cryptocurrency trade. According to the Respondent, the disputed domain names have not been used with any websites as the Respondent must first become informed about the “cryptocurrency universe”. The Respondent adds that he elected voluntarily not to upload any websites after receiving the Complainant’s cease and desist letter until this matter is resolved. The Respondent asserts that the registration of the disputed domain names is “completely legal”, and maintains that it was the Registrar’s customer service that alerted the Respondent to the practice of purchasing domain names for future use. The Respondent explains that after receiving the Complainant’s cease and desist letter and speaking with the Registrar’s customer service, he offered the disputed domain names for sale. The Respondent contends that the disputed domain names are not identical to the Complainant’s FACEBOOK mark and that the disputed domain names would not be found confusingly similar by any average person conducting a search seeking cryptocurrency-related information. According to the Respondent, had he intended to create consumer confusion he would have included “Libra” with FACEBOOK in order to suggest an affiliation with the Complainant. The Respondent characterizes the Complainant’s contention that the Respondent lacks rights or legitimate interests in the disputed domain names as based on conjecture, guesses, and inaccurate assumptions. The Respondent reiterates that at all time he acted properly in securing the disputed domain names for his future use. The Respondent denies any bad faith registration and use of the disputed domain names. The Respondent remarks again that he offered the disputed domain names for sale only after receipt of the Complainant’s cease and desist letter, and that he has not pushed forward with any of his plans pending the resolution of this dispute. The Respondent represents that he was advised by the Registrar that he could resell the disputed domain names at any time and was directed to an online auction as a means to gauge market interest in the disputed domain names. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain names, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain names In this case, the Complainant’s FACEBOOK mark is clearly recognizable in each of the disputed domain names.2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 The Panel considers that the Respondent’s appropriation of the Complainant’s FACEBOOK mark in multiple disputed domain names reflects targeting of the Complainant’s mark.4 gTLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.5 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s well known FACEBOOK mark. Nevertheless, the Respondent has registered multiple domain names appropriating the Complainant’s FACEBOOK mark shortly after the Complainant’s public announcement of its proposed “Libra” currency initiative. The Respondent passively held the disputed domain names until being put on notice by the Complainant, at which time the Respondent sought to sell the disputed domain names to the Complainant for upwards of USD 200,000. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel upon review of the record in this case finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. The Respondent claims to have registered the disputed domain names in order to undertake operations in the cryptocurrency trade. However, it is clear beyond cavil that the Respondent registered multiple domain names appropriating the Complainant’s well known FACEBOOK mark within a day after the Complainant’s public announcement of its cryptocurrency initiative. The Respondent then passively held the disputed domain names until receiving the Complainant’s cease and desist letter, at which time the Respondent attempted to sell the disputed domain names to the Complainant at a considerable asking price of upwards to USD 200,000. It would strain credulity for the Respondent to claim to have been unaware of the Complainant’s FACEBOOK mark when registering the disputed domain names, all of which appropriate the Complainant’s well known mark. The attendant circumstances in this case strongly evince that the Respondent registered the disputed domain names with the intention of selling the domain names at a considerable profit. In light of the foregoing, the Panel finds the Respondent’s claim to have registered the disputed domain names for use in the cryptocurrency trade to be pretextual. Having regard to all of the relevant circumstances, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s FACEBOOK mark, and there is no indication that the Respondent has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s FACEBOOK mark in mind when registering the disputed domain names. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain names was to exploit or otherwise profit from the Complainant’s trademark rights by selling the disputed domain names to the Complainant or other potential buyers for an amount considerably in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. The Respondent’s passive holding or non-use of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s FACEBOOK mark is distinctive and well known. The Respondent beyond question was aware of the Complainant and the Complainant’s well known mark when registering the disputed domain names, and has used the disputed domain names to target the Complainant’s mark. Based on the record in this case, the Panel cannot conceive of any plausible good faith use of the disputed domain names that could be made by the Respondent. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 2 See WIPO Overview 3.0, section 1.8 and cases cited therein. 3 Id. 4 See WIPO Overview 3.0, section 1.7. 5 See WIPO Overview 3.0 , section 1.11 . The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein.
Sole Panelist
Date: December 23, 2019
Full & Egal Universal Law Academy