The Complainants are Facebook, Inc., United States of America (“United States”) and Libra Association, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Kevin Mehrabi, United States, represented by Sovereign Law Group, 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 4, 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 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 March 5, 2020, 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 March 6, 2020. 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 March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. As the Respondent sent an email to the Center requesting to stop the dispute, on March 26, 2020, a possible settlement email was sent to the Parties on the same day, however no suspension was requested. The Respondent sent a further email communication on March 31, 2020. The Center informed the parties of the commencement of panel appointment on April 1, 2020. The Respondent sent an informal communication to the Center, on the same day, asking for an extension of the Response due date. The Complainant sent an email to the Center and the Respondent, on April 3, 2020, indicating its availability to suspend the proceeding should the Respondent have agreed on the transfer of the disputed domain name to the Complainant within April 7, 2020. Accordingly, the Center sent an email to the Parties, on the same day, indicating that it expected to proceed to panel appointment after April 7, 2020, unless the Parties have instructed differently. In such communication, the Center also reminded that the Response due date was March 30, 2020 and that possible late submissions of the Parties will be forwarded to the Panel (when appointed), who will discretionally decide whether to consider any such submission in deciding the case. The Complainant filed a Supplemental Filing on April 16, 2020 The Center appointed Luca Barbero as the sole panelist in this matter on April 20, 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. On April 24, 2020, the Respondent filed a late Response. 4. Factual Background The first Complainant, Facebook, Inc., is one of the world’s leading provider of online social-networking services. Founded in 2004, it allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. Today, the first Complainant has approximately 2.45 billion monthly active users and 1.62 billion daily active users on average worldwide (as of September 30, 2019), ranking 14th in Interbrand’s Best Global Brands report, in 2019. On June 18, 2019, the first Complainant announced it was planning to develop a new cryptocurrency under the name LIBRA. The project is governed by the second Complainant, Libra Association, which consists of several members, such as non-profit and multilateral organizations, academic institutions and businesses, including the first Complainant. The mission of the second Complainant is to develop a global payment system. Comprehensive information about the Libra payment network are provided on the second Complainant’s main website at “www.libra.org”. The first Complainant is the owner of several trademark registrations for FACEBOOK, including the following, as per trademark certificates submitted as Annex 10 to the Complaint: - United States Trademark Registration No. 3122052 for FACEBOOK (word mark), registered on July 25, 2006, in International classes 35 and 38; - European Union Trade Mark registration No. 005722392 for FACEBOOK (word mark), registered on April 29, 2008, in classes 18, 25, and 28; - International Trademark Registration No. 1075094 for FACEBOOK (figurative mark), registered on July 16, 2010, in classes 9, 35, 36, 38, 41, 42, and 45. The second Complainant is the owner, amongst others, of the following trademark registrations for LIBRA: - United States Trademark Registration No. 4978614 for LIBRA (word mark), registered on June 14, 2016, in International classes 9, 35, 36, and 42; - United States Trademark Registration No. 5831438 for LIBRA (figurative mark), registered on August 13, 2019, in International class 9; - European Union Trade Mark registration No. 017981602 for LIBRA (figurative mark), registered on March 20, 2019 in classes 9, 35, 36, and 42. The first Complainant is also the owner of numerous domain names consisting of or including the trademark FACEBOOK, registered under various generic Top-Level Domains (“gTLDs”) as well as under a number of country code Top-Level Domains (“ccTLDs”). The disputed domain name Based on the screenshots submitted by the Complainants as Annex 11 to the Complaint, the disputed domain name was previously pointed to a web page entitled “Facebook Libra Community”, with a subtitle “Coming soon, a community hub for all things Facebook Libra – Updates, Downloads, Discussion”. The website featured prominently the Complainants’ figurative trademarks FACEBOOK and LIBRA and provided information about the Complainants’ project about the LIBRA payment system, inviting users to provide their email addresses and indicating the following disclaimer at the bottom of the page: “Facebook-Libra.com – a community-run website not affiliated with Facebook, Inc. or the Libra Foundation”. 5. Parties’ Contentions A. Complainant The Complainants contend that the disputed domain name The Complainants further highlight that, far from preventing confusing similarity, the inclusion of both the FACEBOOK and LIBRA trademarks in the disputed domain name is only likely to exacerbate public confusion as to the website’s true affiliation to the Complainants, particularly in light of the involvement of the first Complainant in the development and launch of the LIBRA payment network. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainants state that: - the Respondent is not a licensee of the Complainants, nor was it granted any authorization to make use of the FACEBOOK or LIBRA trademarks, in a domain name or otherwise; - the Respondent is not commonly known by the disputed domain name and has no trademark rights in the trademarks encompassed in the disputed domain name; - the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, since, at the time of filing the Complaint, the disputed domain name resolved to a website which purported to be a “community hub for all things Facebook Libra”,though the website itself contained very little substantive content, such as logos and graphics, illegally taken from the website “www.calibra.com”. In addition, all the links displayed on the website at the disputed domain name lead to external web pages. Furthermore, the Respondent is not currently making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers since: - the Respondent registered the disputed domain name in May 2019, immediately after the first public reports speculating that any cryptocurrency product developed by Facebook would be called “Libra”; - the disputed domain name has been redirected to a website not displaying substantive content despite the fact that regulatory matters have caused the Complainants to feature heavily in the media; - the Respondent has failed to come forward in reply to the Complainants’ pre-Complaint notice to assert that it is making any genuine noncommercial or fair use of the disputed domain name; - although the Respondent appears to organize events for blockchain and cryptocurrency enthusiasts, specific details of these events are not provided on the Respondent’s website published at the disputed domain name, and are instead found on the events pages of the third-party website “www.meetup.com”; - the presence of a discreet disclaimer-like statement in the footer of the Respondent’s website, combined with the near identical look-and-feel of the Respondent’s website compared to the official websites available at “www.libra.org” and “www.calibra.com”, the use of the same typeface and distinctive purple-and-white color scheme used by the second Complainant and the use of the second Complainant’s distinctive logo as a favicon and in the header of the Respondent’s website, create an impermissible misleading impression that the Respondent’s website is operated by the second Complainant; - the Respondent’s right to create a “community website” does not extend to registering a domain name that is identical to the Complainants’ trademarks; - due to the close association between the disputed domain name and the activities of the second Complainant in the financial sector, there is a real and appreciable risk that the disputed domain name may be used by the Respondent or by a third party for non-public-facing activities that place the security of Internet users at risk (e.g., phishing, unauthorized account access, hacking, etc.). The Complainants submit that the Respondent registered the disputed domain name in bad faith since: - the Respondent could not credibly argue that it did not have prior knowledge of the trademark FACEBOOK at the time it registered the disputed domain name since the trademark is highly distinctive and famous throughout the world, as also found in several prior UDRP decisions; - the disputed domain name was undoubtedly registered with the Complainants in mind as the contents of the Respondent’s website clearly refer to the Complainants; - the disputed domain name was registered only few days after the news reports speculated that a cryptocurrency product under development by the first Complainant would have been called LIBRA, such circumstance suggesting that the Respondent registered the disputed domain name opportunistically in view of taking advantage of the goodwill associated with the Complainants’ trademarks. The Complainants also submit that the Respondent is using the disputed domain name in bad faith because: - the website created by the Respondent is likely to mislead Internet users as to the source or affiliation of the Respondent’s website. This is more so exacerbated by the fact that the Respondent used the same color scheme, typeface, general look and feel as well as other features that give the overwhelming impression that it is an official website operated or associated to the Complainants; - the Respondent’s website contains little substantive content or active links, while making stylized LIBRA logo; - the disputed domain name, by nature, carries a high risk of implied affiliation with the Complainants, which are in the process of developing a new global payment network. In light of the inherent security risk to consumers that the disputed domain name poses in the context of the Complainants’ proposed financial services, identically reproducing the Complainants’ trademarks, the presence of the disputed domain name in the hands of the Respondent represents an abusive threat hanging over the heads of the Complainants. Furthermore, the Respondent failed to reply to the Complainants’ pre-complaint correspondence and the lack of any clear contact information on the Respondent’s website as well as the concealment of the Respondent’s identity behind privacy service, may also be considered as further indicators of bad faith. B. Respondent The Respondent did not file a timely Response to reply to the Complainants’ contentions but submitted a late response on April 24, 2020. Within the Response due date, the Respondent addressed informal email communications to the Center requesting to stop the dispute, indicating that it had seen the Center’s emails notifying the Complaint only upon receipt of the paper version of the [written notice of the] Complaint by post and requesting the Complainants to withdraw the Complaint. In the late response, the Respondent claims that an authorized agent of the second Complainant, who holds the position of Head of Developer Ecosystem, “has implicitly given permission or in the alternative led the Respondent to the belief that he was able to use the Libra trademark in order to create a community organization group”. The Respondent points out that it registered the disputed domain name for legitimate and noncommercial use, namely to use it in connection with a webpage created as a fan of the stable-coin project LIBRA. It underlines that at no time it was seeking to profit from or exploit the trademark of another and that its website does not have any commercial activity nor does it seek any sort of compensation for its website. C. Complainant’s Supplemental Filing The Complainants submit that they are justified in their submission of the Supplemental Filing on the following grounds: - the Respondent sent informal communications to the Complainants, after the filing of the Complaint, alleging that it has been in talks with the second Complainant regarding his use of the disputed domain name. The Respondent’s assertions in this regard mischaracterize its previous contact with the second Complainant in a manner which unfairly prejudices the Complainants’ case; - subsequent to the filing of the Complaint, the Respondent’s website at the disputed domain name has undergone changes, thereby giving rise to new evidence that the Complainants could not reasonably have known the existence of at the time of filing the Complaint, and therefore could not have been addressed in the Complainants’ initial submissions. Based on the correspondence sent by the Respondent to the Complainant, the Respondent was in contact with a person who operates the developer platform at the second Complainant. The Complainants note that, while the Respondent may have engaged in discussions with such person regarding the possible creation of a website and other community activities, it was made clear to the Respondent that the use of the FACEBOOK trademark for any such purpose was not acceptable and the Respondent was not granted any permission to register the disputed domain name. As to the changes made to the Respondent’s website after the filing of the Complaint, the Complainants note that the Respondent has removed from the website the Complainants’ figurative trademarks and altered the look and feel of the website to remove the distinctive purple and white color scheme used on the “www.libra.org” and “www.calibra.com” websites. The Complainants further submit that the Respondent’s change in the title of the website at the disputed domain name from “Facebook Libra” to “Libra Public” does not avoid the fact that the disputed domain name itself, carries a high risk of implied affiliation with the Complainants, where no such affiliation actually exists. The Complainants conclude that the Respondent’s recent changes to its website are merely an attempt to avoid responsibility for his bad faith registration and use of the disputed domain name. At the same time such changes, serve as further evidence of the Respondent’s bad faith. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. 6.1 Preliminary procedural issues A. Consolidation of multiple Complainants Multiple complainants may bring a consolidated complaint against a single respondent if: (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient (see Section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the case at hand, the Panel finds that the first and the second Complainants have a common grievance against the Respondent, given that they are owners, respectively, of trademark rights over the signs FACEBOOK and LIBRA encompassed in the disputed domain name. The Panel also finds that, in the circumstances of the case, it would be equitable and procedurally efficient to proceed to a single decision. B. Complainant’s Supplemental Filing and Respondent’s late Response Before entering into the merits of the case, the Panel also needs to address the issue of the unsolicited Supplemental Filings submitted by the Complainants and the Respondent’s late Response. No provision concerning supplemental filings are made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case. According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. As stated in the WIPO Overview 3.0, section 4.6, unsolicited supplemental filings are generally discouraged – unless specifically requested by the panel – and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc.,WIPO Case No. D2017‑0481. In light of the fact that the Complainants’ Supplemental Filing relates to circumstances that the Complainants could not have known at the time of the filing of the Complaint, namely i) the fact that the Respondent – whose identity was originally shielded in the public WhoIs records – had some contacts with one person working for the second Complainant, and ii) that the Respondent made some changes to the website published at the disputed domain name after the filing of the Complaint, the Panel has decided to accept it. Moreover, since the Respondent, by submitting its late Response after having received the Complainant’s Supplemental Filing, has had the opportunity to address the arguments raised by Complainants in such submission, the Panel does not deem appropriate to request the Parties to provide any additional comments on the case and will thus proceed with the decision. 6.2. Substantive Issues A. Identical or Confusingly Similar The Panel finds that the Complainants have established rights over the trademarks FACEBOOK and LIBRA based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 10 to the Complaint. It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview 3.0). In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademarks FACEBOOK and LIBRA and that the presence of the hyphen in the disputed domain name is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainants’ trademarks. Moreover, the Panel finds that the gTLD suffix “.com” is disregarded being a mere technical requirement of registration. In view of the above, the Panel finds that the Complainants have proven that the disputed domain name is confusingly similar to each one of the registered trademarks in which they have established rights as prescribed by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Complainants have made a prima facie case and that the Respondent has failed to provide any element apt to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy. According to the evidence on record, Respondent is not a licensee or authorized agent of the Complainants and the Complainants have not authorized the Respondent to register or use its trademark or the disputed domain name. Indeed, also in the correspondence submitted by the Respondent regarding its prior contacts with an employee of the second Complainant, there is no reference to the disputed domain name or to an authorization given to the Respondent to use both the Complainants’ trademark as domain name. In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name. Based on the screenshots submitted by the Complainants, which were not contested by the Respondent, the disputed domain name was pointed, before the filing of the Complaint, to a website featuring the Complainants’ figurative trademarks and providing information about the LIBRA project, inviting users to provide their email addresses and displaying a disclaimer in the footer, in small characters, informing about the lack of affiliation with the Complainants. The Panel finds that, in view of the Respondent’s use of the disputed domain name in connection with the website described above, the Respondent did not use it in connection with a bona fide offering of goods or services before receiving notice of the dispute. Moreover, since the contents of the Respondent’s website were – and currently are, even after the changes made by the Respondent after the notification of the Complaint – apt to confuse and mislead Internet users inducing them to believe that the website is managed by the Complainants or one of their affiliated entities, the Panel also finds that the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As to the Respondent’s claim that it is a fan of the LIBRA project and intended to build a website dedicated to a LIBRA community, the Panel notes that the right to operate a community or fan site does not extend to registering and using a domain name corresponding to third-party trademarks, since the disputed domain name may be misunderstood by Internet users as being sponsored or endorsed by the trademark owner. The Panel notes that while the disputed domain name is confusingly similar to each one of the trademarks individually considered (being almost identical to the combination of both of the Complainants’ trademarks), the composition of the disputed domain name (reproducing both trademarks in its entirety separated by a hyphen) carries also a high risk of implied affiliation with the Complainants. See, along these lines, sections 2.7.2, and section 2.5.1 of the WIPO Overview 3.0. In addition, noting the nature of the disputed domain name, the Panel finds that the disclaimer, included in a footer at the website (visible to the Internet users at a later stage while visiting the website), is not capable to prevent that the disputed domain name creates a risk of implied affiliation or association with the Complainants (and its trademarks). Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As to bad faith at the time of the registration, the Panel notes that, in light of the well-known character of the trademark FACEBOOK owned by the first Complainant and the fact that the disputed domain name was registered only few days after the news reports speculated that a cryptocurrency product under development by the first Complainant would have been called LIBRA, the Respondent was in all likelihood aware of the Complainant’s trademarks, with which it is confusingly similar. As in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the Domain Name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”. Moreover, in light of the contents of the website to which the disputed domain name has been pointed, it is clear that the Respondent was indeed well aware of the trademarks FACEBOOK and LIBRA and clearly registered the disputed domain name with such trademarks in mind. The Panel also notes that, in view of the Respondent’s redirection of the disputed domain name to a website featuring the Complainants’ trademarks and imitating the look and feel of other official websites dedicated to the LIBRA payment system – as highlighted in the screenshots submitted by the Complainant as annex to the Complaint – requesting users to provide their email addresses and publishing a disclaimer only in the footer of the home page, the Respondent intentionally created an impression of association with the Complainants, causing a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website. As an additional circumstance evidencing bad faith, it appears that the Respondent deliberately changed the content of the website at the disputed domain name, after the filing of the Complaint, in an attempt to avoid the consequences of its unauthorized registration and use of the same. In view of the above, the Panel finds that the Complainant has also demonstrated that the Respondent registered and used the disputed domain name in bad faith according to 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 Luca Barbero
Sole Panelist
Date: May 4, 2020
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