Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Peter Kuku, 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 March 3, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2020, 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 March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2020. The Center appointed Anne Gundelfinger as the sole panelist in this matter on April 12, 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 Complainant is Facebook, Inc., the leading worldwide provider of online social networking services. Founded in 2004, Facebook allows Internet users to connect with friends, family, colleagues, and others, and to share information mainly via its website available at “www.facebook.com”. Complainant uses the name and trademark FB (the “FB Mark”), is widely known under this designation (as well as the FACEBOOK mark), and owns a number of registrations for FB and FACEBOOK marks and domain names around the world including the following: - United States Registration No. 4659777, FB (word mark), registered December 23, 2014 (first use in commerce in April 2014); The disputed domain name was registered on October 11, 2019 with the Registrar by Respondent using the privacy service Privacy Protect, LLC. The disputed domain name currently resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to the FB Mark because the disputed domain name wholly incorporates the FB Mark along with the dictionary terms “grants office”. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, Complainant asserts that (a) Respondent is not sponsored or affiliated with Complainant in any way, (b) Complainant has given no permission or license for use of the disputed domain name, (c) Respondent is not known by the disputed domain name, (d) Complainant’s FB Mark is well known and famous, (e) Respondent’s only use of the disputed domain name has been to host a fraudulent website engaged in phishing, and (f) when registering the disputed domain name Respondent provided a non-existent address and cloaked its identity by use of a domain name privacy service. In support of these contentions, Complainant has submitted comprehensive, persuasive, and unrebutted evidence establishing the following points: - Complainant is the world's leading provider of online social networking services. Since its launch in 2004, Complainant rapidly developed considerable renown and goodwill and currently has more than 2.5 billion monthly active users and 1.66 billion daily active users on average worldwide. Its main website “www.facebook.com” is currently ranked as the 4th most visited website both in the world and in the United States. Facebook is also available for mobile devices and is ranked as the 2nd most downloaded application in the world and the 6th most downloaded in the United States. - Complainant is commonly known by the designation “FB” as evidenced by (among other things) numerous press references to Complainant by the “FB” designation, and by the fact that the top results obtained by entering “FB” into a Google search refer to Complainant. - Complainant has developed considerable reputation and goodwill worldwide in both its services and brands, including its FB Mark, which is registered in many jurisdictions throughout the world including the United States, the European Union, and Canada, as noted above. - At the time of discovery by Complainant, the disputed domain name resolved to a website displaying the well-known FACEBOOK logo, using look-and-feel similar to Complainant’s website at “www.facebook.com”, featuring the title “Powerball Jackpot Lottery”, and sharing stories and photos of prior “Facebook Powerball Jackpot Winners” who had purportedly won hundreds of thousands or millions of dollars in the “Facebook Powerball Jackpot Lottery”. The website encouraged visitors to enter their names, addresses, contact information, and other personal information in a “Online Facebook Lottery Jackpot Claims Registration Form”, all in an apparent attempt to engage in fraudulent phishing activity. - When registering the disputed domain name Respondent provided a non-existent address and cloaked its identity by use of a domain name privacy service. - In light of this apparently fraudulent activity, Complainant requested the Registrar to suspend the website at the disputed domain name, which the Registrar did. Accordingly, the disputed domain name currently no longer resolves. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has well-established trademark rights in the FB Mark in the United States, the European Union, and other jurisdictions around the world. The Panel further concludes that Complainant is one of the most well-known and recognized companies in the world, and that its FB Mark is well known. Complainant’s FB Mark has also been recognized by other UDRP panels as famous and well-known. See, Facebook, Inc. and Instagram LLC v. Adam Szulewski,WIPO Case No. D2016-2380 (ordering transfer of the FB-based domain names The disputed domain name wholly incorporates Complainant’s well-known FB Mark along with the dictionary terms “grants” and “office”. Prior UDRP panels have consistently held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusing similar to Complainant’s FB Mark, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant needs only to present a prima facie case in relation to the second element of the test, and that once such a showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name. See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205. Here, Complainant has demonstrated its well-established rights in its well-known FB Mark. While this alone would generally be sufficient to infer Respondent’s knowledge of Complainant’s rights, here it is not necessary to make such an inference, because Complainant has demonstrated with credible unrebutted evidence that Respondent used the disputed domain name to host a website using Complainant’s well-known FACEBOOK logo and the look-and-feel of its official website at “www.facebook.com”. Therefore, it is obvious that Respondent was aware of Complainant’s marks and rights and is using the FB Mark as part of the disputed domain name to mislead and to draw visitors into providing personal information as part of an apparent phishing scheme under the FACEBOOK and FB marks. It is well-established that such use can never give rise to any right or legitimate interest on the part of a respondent in a disputed domain name. See, section 2.13 of the WIPO Overview 3.0. Complainant has further asserted that Respondent owns no trademark registrations for the disputed domain name, is not commonly known by the disputed domain name, is not making a legitimate fair use of the disputed domain name, and further that Complainant has no relationship with Respondent and has not licensed or otherwise permitted Respondent’s use of the disputed domain name. In the absence of a response from Respondent, the Panel accepts Complainant’s evidence and assertions, and finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has met its burden and that the second element of the test is satisfied. C. Registered and Used in Bad Faith The third element of the test requires a showing that the disputed domain name has been registered and is being used in bad faith. As previously concluded, the disputed domain name is confusingly similar to Complainant’s well-known FB Mark. Given the foregoing, and the fact that Respondent used the disputed domain name to host an apparently fraudulent phishing website under Complainant’s FACEBOOK and FB marks, one can only fairly conclude that Respondent was well aware of Complainant’s rights in the FB Mark when registering the disputed domain name, and maliciously used the FB Mark as part of the disputed domain name to mislead and draw visitors into providing personal information as part of an apparent phishing scheme under Complainant’s FACEBOOK and FB marks. This more than suffices to establish bad faith registration and use. See, paragraph 4(b)(iv) of the Policy; section 3.1.4 of the WIPO Overview 3.0 and cases cited therein; Facebook, Inc. v. WhoisGuard, Inc. / Donna E. Fleming, Mansmann’s Department Store,WIPO Case No. D2019-1777; Virgin Enterprises Limited. v. Remi Ibrahim,WIPO Case No. D2018-2131. Finally, while not necessary to the finding, Respondent’s use of a privacy protection service and its apparently false registration information further support a finding of bad faith registration and use. See, section 3.6 of the WIPO Overview 3.0 and cases cited therein. Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the test is satisfied. 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 Anne Gundelfinger
- European Union Registration No. 008981383, FB, registered August 23, 2011;
- Canadian Registration No. TMA929282, FB, registered February 18, 2016; and
- Unites States Registration No. 4489662, , registered February 25, 2014.
- Domain names including
Sole Panelist
Date: April 24, 2020
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