The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Colin Chiat, Canada. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 15, 2020, 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 January 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2020. The Center received an email communication from the Respondent on February 3, 2020. Pursuant to paragraph 6 of the Rules, on February 10, 2020, the Center notified the Parties that it would proceed to panel appointment. The Center received additional email communications from the Complainant and the Respondent on February 12 and 13, 2020. The Center appointed Daniel Peña as the sole panelist in this matter on February 14, 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 one of the world’s leading providers of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. The Complainant has more than 2.32 billion monthly active users and 1.47 billion daily active users on average worldwide. Its main website “www.facebook.com” is currently ranked as the 3rd most visited website both in the world and in Canada according to information company Alexa. The Complainant is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market, with 1.74 billion mobile monthly active users and 1.15 billion mobile daily active users. It is the most downloaded application in the world as per App Annie’s Top Apps Ranking in 2019. The Complainant is the exclusive owner of a number of registered trademarks consisting of the word “facebook” in various jurisdictions throughout the world, including the following: - Canadian Trademark Registration No. TMA732,799, FACEBOOK, registered on January 21, 2009; - Canadian Trademark Registration No. TMA742,212, FACEBOOK, registered on June 18, 2009; - the European Union Trade Mark Registration No. 002483857, for the word FACEBOOK, registered on June 13, 2003, - the International Trademark Registration No.1075094, for the word FACEBOOK with figurative element, registered on July 16, 2010, - the United States Trademark Registration No. 3041791, for the word FACEBOOK, registered on January 10, 2006. The Complainant is the owner of numerous domain names consisting of the term “facebook”, for instance, The Respondent is currently the registrant of two other domain names under “.ca” country code Top-Level Domain (“ccTLD”) for Canada including the Complainant’s trademark: On July 8, 2019, the Complainant’s lawyers sent by email and by registered post a cease and desist letter to the Respondent, asserting the Complainant’s rights in the term “facebook” and requesting the transfer of the disputed domain names. As evidenced by his signature on the delivery receipt, the Respondent received the cease and desist letter sent by post, but did not respond. The disputed domain names were registered on February 1, 2011 and are not resolving to active websites. 5. Parties’ Contentions A. Complainant The Complainant has established rights in the expression “facebook”. The Complainant submits that the disputed domain names The disputed domain names incorporate the Complainant’s FACEBOOK mark in its entirety with the addition of the generic terms “deals”, “store” and “deal”. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not submit a formal reply to the Complainant’s contentions. An informal email from the Respondent to the Center, dated February 3, 2020, made points that may be summarised as follows: on July 22, 2019, the Respondent had answered a letter to the Complainant’s lawyers with the acquiescence to transfer the disputed domain names On February 13, 2020 when the Response due date had expired, the Respondent insisted by an informal communication that he is willing to transfer the disputed domain names. From the foregoing, the Panel concludes that the Respondent expressly agreed to the Complainant’s requested remedy under the Policy. 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 names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Panel holds that the disputed domain names The Respondent’s incorporation of the Complainant’s trademark FACEBOOK in full in the disputed domain names is evidence that the disputed domain names Mere addition of the dictionary terms “deal”, “deals” and “shop” as suffix to the Complainant’s mark fails to distinguish. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In particular, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.com” to the disputed domain names does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see: Carlsberg A/S v. Xu Guo Xing,WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang,WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer,WIPO Case No. D2016-2524). The Panel is satisfied that the disputed domain names Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain names. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain names and that paragraph 4(a)(ii) of the Policy is satisfied. C. 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 disputed 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 documented out-of-pocket costs directly related to the domain name; (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; (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 on-line 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. In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the mark prior to registering the disputed domain names. In this case, the worldwide commercial recognition and notoriety of the Complainant’s marks is such that the Respondent, must have had knowledge of the mark FACEBOOK before registering the disputed domain names. As to use in bad faith, the Complainant says that, the disputed domain names have not been put to any use in connection with an active website. It has long been held in UDRP decisions that the passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate purpose, may indicate that the domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574. The WIPO Overview 3.0, at section 3.3, describes the circumstances under which the passive holding of a domain name will be considered to be in 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 domain name may be put.” See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado,WIPO Case No. D2018-0082. The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain names The Panel concludes that the disputed domain names were registered and are being used in bad faith. 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 Daniel Peña
Sole Panelist
Date: February 27, 2020
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