The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Vitalii Gerasimov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 6, 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 May 11, 2020. The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Russian. On May 6, 2020, the Center sent an email communication in both English and in Russian to the Parties regarding the language of the proceeding. On May 8, 2020, the Complainant requestеd the language of the proceeding to be English. The Respondent did not submit any comments on the language of the proceeding. 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 May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on June 22, 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 a provider of online social-networking services, founded in 2004. It currently has about 2.5 billion monthly active users and 1.66 billion daily active users on average worldwide. Its main website at “www.facebook.com” is ranked as the fourth most visited website in the world according to the information company Alexa, and its FACEBOOK brand is ranked 14th in the 2019 Interbrand’s Best Global Brands report. The Complainant owns the following trademark registrations for FACEBOOK (the “FACEBOOK trademark”): - the United States trademark FACEBOOK with registration No. 3,122,052, registered on July 25, 2006, for services in International Classes 35 and 38; - the European Union Trade Mark FACEBOOK with registration No. 009151192, registered on December 17, 2010, for goods and services in International Classes 9, 35, 36, 38, 41, 42, 45; and - the International Registration FACEBOOK with registration No. 1075094, registered on July 16, 2010, for goods and services in International Classes 9, 35, 36, 38, 41, 42, 45. The disputed domain name was registered on April 28, 2020. It resolves to a website that is currently blocked as unsafe. At the time of filing of the Complaint it redirected to a website featuring the image of the Complainant’s CEO and offering visitors to repay them the double amount of the Bitcoins that they pay to a contribution address indicated on the website. 5. Parties’ Contentions A. Complainant According to the Complainant, the disputed domain name is confusingly similar to the Complainant`s FACEBOOK trademark, which it incorporates in its entirety as its leading element, together with the number 20. The Complainant submits that this combination does not prevent a finding of confusing similarity between the disputed domain name and the FACEBOOK trademark, which remains clearly recognizable in the disputed domain name. The Complainant submits that the Respondent does not have rights and legitimate interests in the disputed domain name, as the Respondent is not commonly known by the disputed domain name, is not a licensee of the Complainant and is not affiliated with it. According to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is using it in connection with a fraudulent scheme that impersonates the Complainant’s founder and CEO by using his image in an effort to derive illegitimate financial gain from unsuspecting Internet users, misleading them to make advance payments in Bitcoin to the Respondent. At the time of filing of the Complaint, the disputed domain name redirected to a web page that purported to be the website of an official “Bitcoin Giveaway”, pursuant to which the Complainant’s founder and CEO was said to be giving away 5,000 Bitcoins, where the Complainant is in fact not offering any such giveaway. According to the Complainant, the website to which the disputed domain name redirected is being used in connection with an “advance-fee fraud” scheme, whereby Internet users are requested to send a small amount of money in return for a larger sum of money, and if a victim makes the payment, the fraudster usually either invents a series of further fees for the victim or simply disappears. The Complainant adds that the Respondent’s fraudulent scheme was also promoted in a YouTube video that encouraged viewers to go to the disputed domain name, and which video was subsequently taken down at the request of the Complainant. The Complainant submits that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent must have known of the FACEBOOK trademark when it registered the disputed domain name in April 2020, at which time the Complainant’s social network already had over 2.5 billion users, and this knowledge is further evident from the use by the Respondent of the name and image of the Complainant’s founder and CEO. By registering the disputed domain name, which differs from the FACEBOOK trademark only by the addition of the number 20, and by using it in connection with a fraudulent scheme impersonating the Complainant’s founder and CEO, the Respondent has attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the FACEBOOK trademark, and to mislead them to make payments to the Respondent. The Complainant further submits that the Respondent’s registration of the disputed domain name using a privacy service to conceal its identity is further evidence of the Respondent’s bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue – Language of the Proceeding According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requests that the language of the proceedings be English, stating that the Respondent has knowledge of the English language, as the website under the disputed domain name is in English, while the submission of the Complaint in the language of the registration agreement would cause the Complainant to incur substantial additional costs and would cause unwarranted delay, contrary to the aim of the Policy of providing time- and cost-efficient means of addressing instances of abusive domain name registration and use. The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a Response or any objections to the Complainant’s request that the proceedings be held in English. As noted by the Complainant, the whole content of the website at the disputed domain name is in English. The above satisfies the Panel that the Respondent can communicate in English, and that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is 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 name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent however did not submit a Response in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the FACEBOOK trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.net” gTLD section of the disputed domain name. The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “facebook20”. It consists of the elements “facebook” and “20”. The “facebook” element is identical to the FACEBOOK trademark, while the “20” element is a number with no distinctiveness or evident meaning. As discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of dictionary or meaningless words would not prevent a finding of confusing similarity under the first element. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the FACEBOOK trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the disputed domain name, is not a licensee of the Complainant and is not affiliated with it. The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but in connection with a fraudulent scheme that impersonates the Complainant’s founder and CEO by using his image in an effort to derive illegitimate financial gain from unsuspecting Internet users, misleading them to make advance payments in Bitcoin to the Respondent. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name. The disputed domain name is confusingly similar to the FACEBOOK trademark and the evidence shows that it has redirected to a “Bitcoin Giveaway” webpage, which contained the image of the Complainant’s founder and CEO, and an offer to visitors to repay them the double amount of Bitcoins that they pay to the Respondent. The Complainant submits that this is an “advance-fee fraud” scheme, and the Respondent has not disputed this or any of the other contentions of the Complainant in this proceeding. In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s FACEBOOK trademark, has registered and used the disputed domain name in an attempt to exploit the goodwill of this trademark to attract Internet users to the Respondent’s website and to carry out the “advance-fee fraud” described by the Complainant. To the Panel, such conduct is not legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The disputed domain name is confusingly similar to the FACEBOOK trademark. The Respondent does not deny that it has been linked to a “Bitcoin Giveaway” webpage, which contained the image of the Complainant’s founder and CEO and a false offer to visitors to repay them the double amount of Bitcoins that they pay to the Respondent. In view of this and in the lack of any evidence to the contrary, the Panel finds that is more likely than not that by registering and using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s FACEBOOK trademark as to the source of the Respondent’ website and to create credibility to the false offer contained on it in an attempt to induce Internet users to make payments to the Respondent. Therefore, the Panel finds that the disputed domain name was registered and has been 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 name Assen Alexiev
Sole Panelist
Date: July 6, 2020
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