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 / Michael Steiner, Engrain, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 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 December 9, 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 December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020. The Center appointed William R. Towns as the sole panelist in this matter on January 21, 2020. 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 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 2.37 billion users as of March 2019. 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 as 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 name was registered on November 17, 2009. The disputed domain name at present does not resolve to an active website. However, the disputed domain name previously has been used by the Respondent to redirect Internet users to the Oodles Marketplace website. The Complainant has operated a de facto online marketplace for some time, and officially introduced Facebook Marketplace in 2016. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK mark. The Complainant observes that the Complainant’s FACEBOOK mark is clearly recognizable within the disputed domain name, and asserts that the addition of the descriptive term “marketplace” does 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”, is generally disregarded when assessing the confusing similarity of the disputed domain name to the Complainant’s mark. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not been commonly known by the disputed domain name and has not 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 name 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 name. The Complainant observes that the only active use the Respondent appears to have made of the disputed domain name has been to redirect Internet users to a third-party online marketplace at “www.oodle.com”. The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant explains that its FACEBOOK mark is highly distinctive and famous throughout 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 also refers to Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547, regarding domain names registered between 2008 and 2013. The Complainant submits that the Respondent had actual knowledge of the Complainant’s FACEBOOK mark when registering the disputed domain name in 2009, at which time the Complainant’s social network already had amassed well over 100 million users. The Complainant reiterates that while it did not launch its official online marketplace until 2016, it had long operated as a de facto marketplace with users trading with one another via various groups. The Complainant contends that the Respondent’s registration of the disputed domain name and its use to redirect Internet users to a third-party online marketing website falsely suggests that the website is associated with the Complainant. The Complainant submits that the redirection of the disputed domain name has the effect of increasing traffic to the “www.oodle.com” website, increasing gross revenue to the website owner. The Complainant asserts that the Respondent intentionally has used the disputed domain to attract for commercial gain Internet users to the “www.oodle.com” website by creating a likelihood of confusion with the Complainant’s FACEBOOK mark as to source, sponsorship, affiliation, or endorsement of the website. The Complainant urges that the Respondent’s non-use and apparent passive holding of the disputed domain name 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 observes that the disputed domain name carries a high risk of implied affiliation with the Complainant, and remarks that the Respondent took steps to conceal his identify when registering the dispute domain name. Moreover, according to the Complainant, the potential exists that the Respondent could resume the abusive use of the disputed domain name at any time. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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 name, 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 name is confusingly similar to the Complainant’s well-known FACEBOOK mark, in which the Complainant has demonstrated rights through registration and extensive use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. In this case, the Complainant’s FACEBOOK mark is clearly recognizable in the disputed domain name.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 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.4 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 registered a domain name appropriating the Complainant’s FACEBOOK, and concealed his identity through use of a privacy or proxy service. The Respondent redirected the disputed domain name to the Oodles Marketplace website. The Respondent presently appears to be passively holding the disputed domain name. 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel considers that the Respondent in all likelihood was aware of the Complainant’s well-known FACEBOOK mark when registering the dispute domain name. The disputed domain name appropriates the Complainant’s FACEBOOK mark in its entirety, and the Panel concludes that the Respondent more likely than not has used the disputed domain name to create Internet user confusion. Internet visitors redirected to the Oodles Market website easily could conclude that the website to which they have arrived is endorsed, sponsored by or affiliated with the Complainant. 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 name 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 name 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 the disputed domain name 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 name. 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 name 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 name 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 name. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to exploit or otherwise profit from the Complainant’s trademark rights. The Respondent’s passive holding or non-use of the disputed domain name 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 in all likelihood was aware of the Complainant and the Complainant’s well-known FACEBOOK mark when registering the disputed domain name, and has used the disputed domain name with the intention to exploit and profit from the Complainant’s mark. In light of the attendant circumstances, the Panel cannot conceive of any plausible good faith use of the disputed domain name 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 name William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Sole Panelist
Date: February 2, 2020
Full & Egal Universal Law Academy