The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Xiamen Tianmu zhuangshi sheji youxian gongsi, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11 and April 14, 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 April 15, 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 April 17, 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 April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 11, 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 states that since 2004, it has operated social networking services under the brand FACEBOOK. The Complainant states that it 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 states that its FACEBOOK social networking service currently has approximately 2.45 billion monthly active users and 1.62 billion daily active users on average worldwide (as of September 30, 2019). The Complainant’s evidence is that its main website “www.facebook.com” is currently ranked as the fourth most visited website in the world (according to information company Alexa), and that approximately 85 percent of its daily active users are outside the United States and Canada. The Complainant states that FACEBOOK’s social networking services are provided in more than 70 languages. In addition, the Complainant claims that FACEBOOK is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market. The Complainant asserts that its FACEBOOK trademark is currently one of the most famous online trademarks in the world and that in 2019, the FACEBOOK brand ranked 14th in Interbrand’s Best Global Brands report. The Complainant further asserts that FACEBOOK has developed considerable reputation and goodwill worldwide in connection with a wide variety of goods and services. The Complainant states that, given the exclusive online nature of its social networking business, the domain names comprising its trademarks are not only the heart of its entire business, but also the main way for millions of users to avail themselves of its services. The Complainant also states that it owns registered trademark rights in the brand FACEBOOK in many jurisdictions around the world, including but not limited to the following trademarks: Trademark Origin Registration No. Date of Registration Classes FACEBOOK United States 3122052 July 25, 2006 35, 38 FACEBOOK China 5251162 September 21, 2009 38 FACEBOOK European Union 009151192 December 17, 2010 9, 35, 36, 38, 41, 42, 45 International 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. 1075094 July 16, 2010 09, 35, 36, 38, 41, 42, 45 These are collectively referred to as the “FACEBOOK Mark”. As well as using its FACEBOOK Mark in its company logo and main website address, the Complainant also states that it uses the mark to promote its services on social media platforms including Facebook (“www.facebook.com/facebook”), Twitter (“www.twitter.com/facebook”), Youtube (“www.youtube.com/facebook”) and Linked In (“www.linkedin.com/company/facebook”). In December 2019, an outbreak of the severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2), also known as “COVID-19”, was identified in Wuhan, Hubei, China. On January 30, 2020, the World Health Organization (WHO) declared the outbreak to be a Public Health Emergency of International Concern, and recognized it as a pandemic on March 11, 2020. The COVID-19 pandemic has had far-reaching and substantial impact on global public health. The Complainant states that, noting the risks to public health associated with misinformation surrounding the COVID-19 pandemic, FACEBOOK has taken active steps to engage with the WHO to combat COVID-19 misinformation. In this regard, the Complainant states it is actively providing its users who search for information on COVID-19 with links to credible sources of information, including to the WHO and the Centers for Disease Control and Prevention. The Complainant states that FACEBOOK has also partnered with the WHO in order to bring the most up-to-date and accurate information to the public. The Respondent registered the disputed domain name The Respondent is using the disputed domain name to host a parking page displaying Pay-Per-Click (PPC) advertising links to various third-party products. 5. Parties’ Contentions A. Complainant The Complainant asserts its rights in the FACEBOOK Mark. The Complainant contends that the disputed domain name is confusingly similar to its FACEBOOK Mark. It states that despite the addition of the descriptive term “covid19”, the FACEBOOK Mark remains prominent and recognizable in the disputed domain name. The Complainant also asserts that the Respondent has no rights in the disputed domain name. In this respect, the Complainant states that the Respondent is not affiliated or connected with it in any way and is not licensed by it or otherwise authorized to use the FACEBOOK Mark and name. The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not commonly known by the disputed domain name and has not acquired any registered trademark rights or unregistered rights in the FACEBOOK Mark or name. The Complainant contends that the Respondent’s use of the disputed domain name is to create an impression of association with the Complainant and to profit from the click-through revenue generated as a result of Internet users being drawn to the parking page to which the disputed domain name resolves. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant states that in response to a cease-and-desist letter the Complainant sent to the Respondent on April 3, 2020, seeking voluntary transfer of the disputed domain name, it received a letter stating: “FACEBOOKCOVID19.COM is listing for sale now Only need $2000 USD”. The Complainant contends that a search on the email address from which the abovementioned letter was sent revealed a substantial number of domain names registered using the same registrant email address, comprising well-known third-party trademarks, including marks belonging to the Complainant and related companies in the Complainant’s corporate group. The Complainant contends that this shows a pattern of conduct on the part of the Respondent to profit from the brand value of trademarked terms. The Complainant also states the disputed domain name automatically redirects online users to third-party websites. The Complainant states that the online user is often redirected to a PPC advertising page featuring links directly relating to the Complainant or other websites advertising different services. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar The Complainant has provided evidence of its registrations in relation to the FACEBOOK Mark around the world, including in the United States, China, and Europe. The Panel finds that the Complainant has clearly and sufficiently demonstrated its rights in the FACEBOOK Mark with a history of use going back to 2004. The Panel is satisfied that the Complainant is well known by its FACEBOOK Mark as an online social networking service. In comparing the FACEBOOK Mark to the domain name, it is well established that the generic Top-Level Domain (“gTLD”), in this case “.com” must be excluded from consideration as being a generic or functional component of the domain name. See section 1.11.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The remaining part of the disputed domain name term consists solely of the FACEBOOK Mark, and the official name for the severe acute respiratory syndrome coronavirus 2, “COVID19”. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” It is the Panel’s view that the combination of the Complainant’s FACEBOOK Mark together with the term “covid19” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's FACEBOOK Mark, which remains clearly recognizable in the disputed domain name. Prior UDRP panels have found similarly constructed domain names to be confusingly similar to the trade mark at issue; see, e.g., Roche Products Limited v. Whitehardt Inc.,WIPO Case No. D2011-0983. It is the Panel’s view that the appending of the official name of the COVID-19 virus, which has caused a global pandemic, to the FACEBOK Mark in a domain name does nothing to eliminate the confusing similarity to the trademark. The Panel therefore finds that the disputed domain name is confusingly similar to the FACEBOOK Mark and the requirement of paragraph 4(a)(i) is satisfied in favor of the Complainant. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or (iii) that the Respondent is 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. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the FACEBOOK Mark or name. Further the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. It is seeking to generate click-through revenue from PPC links on the parking page to which the disputed domain name resolves. Further the Respondent is endeavoring to profit from a sale of the disputed domain name. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has not rebutted. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainant’s FACEBOOK Mark is globally recognized as a social media service with a history of use going back to 2004. Prior UDRP panels have repeatedly recognized the strength and renown of the Complainant’s trademark, and have ordered the transfer of domain names to the Complainant; see, e.g., Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 and Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145. The Panel is satisfied that at the time of registering the disputed domain name in April 2020, the Respondent was aware of the Complainant, its FACEBOOK Mark, the Complainant’s exclusive rights in that mark, and the goodwill residing in the mark (over 2.45 billion users). Without any rights or legitimate interests, the Panel considers the Respondent’s registration of the disputed domain name is indicative of bad faith. (ii) The Panel accepts that the Respondent’s reply to the Complainant’s cease-and-desist letter (requesting voluntary transfer of the disputed domain name), stating that the disputed domain name was for sale for USD 2,000, is evidence that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name registration to the Complainant, the owner of the FACEBOOK Mark, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. The Panel considers this to be indicative of bad faith pursuant to paragraph 4(b)(i) of the Policy. (iii) The Complainant has referred the Panel to the existence of more than nine domain names, registered using the same registrant email address from which the Respondent’s request for USD 2,000 was received, comprising well-known third-party trademarks, including GOOGLE, SAMSUNG, HYUNDAI, SIEMENS, MICROSOFT, INSTAGRAM, and WALMART. In each case, the well-known third-party mark is easily recognizable. As per section 3.1.2 of the WIPO Overview 3.0, it is the Panel’s opinion, in the absence of any arguments or evidence to the contrary by the Respondent, the list of nine domain names featuring other famous or well-known marks demonstrates that the Respondent has clearly engaged in a pattern of registering domain names to prevent the trademark owner from reflecting its own mark in a corresponding domain name. See Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi,WIPO Case No. D2017-0391 and Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods,WIPO Case No. D2016-0256. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (i) The Complainant has provided evidence (Annex 12 to the complaint) which shows that the website to which the disputed domain name resolves to a parking page displaying PPC links to various third-party products automatically redirecting the online user to third-party websites. The disputed domain name is therefore presumably providing the Respondent with an income source via the PPC features. The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent. The Panel therefore concludes that in addition to the offer to sell, the Respondent, by using the disputed domain name, has intentionally attempted 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 its website or of a product or service on its website. This is particularly so during a time of unprecedented public interest in and concern over the COVID-19 pandemic and its effects on all aspects of life. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). (ii) Noting the particular construction of the disputed domain name to include the FACEBOOK Mark together with the term “covid19”, the Panel considers that there is a strong likelihood that many members of the public may perceive the disputed domain name as an official source for information related to the current COVID-19 pandemic. It is the Panel’s view that there is a risk the disputed domain name could be used in connection with a website or for email to impersonate the Complainant in an effort to disseminate misinformation, placing the public at risk. The Panel further accepts the Complainant’s submission that the Respondent’s use of the disputed domain name represents an abuse capable of being triggered by the Respondent at any time, and therefore a continuing abusive use; see Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564. Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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 Andrew Brown Q.C.
Sole Panelist
Date: May 18, 2020
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