The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Juan Acosta, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed 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 names. On May 5, 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 May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2020. The Center appointed William R. Towns as the sole panelist in this matter on June 18, 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 well-known provider of online networking services. The Complainant adopted and has used FACEBOOK as an indicator of source since 2004, and holds multiple trademark registrations for the FACEBOOK mark in the United States and other jurisdictions, including the following: −United States, Registration No. 3122052, registered on July 25, 2006 (first use in commerce in 2004); − European Union, Registration No. 009151192, registered on December 17, 2010; and − International Registration No. 1075094, registered on July 16, 2010, designating multiple jurisdictions. The Complainant also has registered numerous domain names reflecting its FACEBOOK mark. The Complainant has experienced substantial growth of its online networking services under the FACEBOOK mark, growing from one million active users by the end of 2004 to 2.5 billion monthly users as of December 2019. The Complainant’s website “www.facebook.com” is consistently ranked among the most visited website in the world, and UDRP panels have recognized the Complainant’s FACEBOOK mark as one of the most famous online marks in the world. See Facebook, Inc. v. Franz Bauer,WIPO Case No. D2010-1247; Facebook, Inc. v. He Wenming,WIPO Case No. DCC2013-0004; Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan,WIPO Case No. D2015-0614; Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145. The disputed domain names were all registered on January 22, 2020, and resolve to the same parking pages provided by the Registrar. The Complainant issued a cease and desist letter by email to the Respondent on March 24, 2020, requesting the voluntary transfer of the disputed domain names, and followed up with a reminder notice on April 1, 2020. The Respondent did not reply to the Complainant’s communications. 5. Parties’ Contentions A. Complaiant The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s FACEBOOK mark. The Complainant observes that the Complainant’s FACEBOOK mark is clearly recognizable within the disputed domain names, and asserts that the addition of the descriptive elements “freeporn”, “porn”, “porno”, “pornoxxx”, “videos”, “vids”, “xnxx”, “xvideos”, “xvids” and “xxx” does not preclude a finding of confusing similarity under the first element of the Policy. The Complainant further notes that the generic Top-Level Domain (“gTLD”), in this case “.com”, generally is disregarded when assessing the confusing similarity of the disputed domain names to the Complainant’s mark. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, the Respondent has not been commonly known by the disputed domain names and has not been licensed or otherwise authorized to use the Complainant’s FACEBOOK mark. The Complainant relates that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and further submits that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names. The Complainant submits that the Respondent is violating the Complainant’s Brand Guidelines as well as the Complainant’s Community Standards regarding adult nudity and sexual activity. The Complainant represents that to the best of its knowledge the Respondent has not made any active use of the disputed domain names. The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant observes that its rights in the FACEBOOK mark pre-date the Respondent’s registration of the disputed domain names by some 14 years. The Complainant emphasizes that the FACEBOOK mark is highly distinctive and famous throughout the world, and has been continuously and extensively used since 2004. See, e.g., Facebook, Inc. v. He Wenming, supra (holding that “the Complainant and its FACEBOOK trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the world for its online social networking services”). The Complainant also refers to Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547. The Complainant submits that the Respondent had actual knowledge of the Complainant’s FACEBOOK mark when registering the disputed domain names, at which time the Complainant observes that its social network already had amassed well over 2.45 billion users. The Complainant maintains that the Respondent’s knowledge of the Complainant’s FACEBOOK mark can be readily inferred given that the Complainant’s mark is the sole element present in the second level of all nine of the disputed domain names. The Complainant asserts that by registering nine disputed domain names appropriating the Complainant’s FACEBOOK mark in its entirety, the Respondent has engaged in an abusive and bad faith pattern of targeting the Complainant. Further, according to the Complainant, the inclusion in the disputed domain names of the elements “freeporn”, “porn”, “porno”, “pornoxxx”, “videos”, “vids”, “xnxx”, “xvideos”, “xvids” and “xxx” adjacent to the FACEBOOK mark has the effect of tarnishing the Complainant’s mark. The Complainant maintains that the Respondent’s non-use and apparent passive holding of the disputed domain name does not preclude a finding of bad faith in the overall circumstances of the case, particularly given the distinctiveness and renown of the Complainant’s FACEBOOK mark and its longstanding and widespread use. The Complainant submits that Internet users when confronted with the disputed domain names could be confused and as a result assume some affiliation with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain names In this case, the Complainant’s FACEBOOK mark is clearly recognizable in the disputed domain names.2 When the relevant trademark is recognizable in the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 gTLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s FACEBOOK mark. Nevertheless, the Respondent has registered multiple domain names appropriating the Complainant’s FACEBOOK mark in its entirety. As previously noted, the disputed domain names by all appearances have not been associated with a website. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes the Respondent was aware of the Complainant and the Complainant’s FACEBOOK mark when registering the dispute domain names. Having regard to the relevant circumstances, the Panel finds that the Respondent has neither used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or other fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s FACEBOOK mark, and there is no indication that the Respondent has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record supports a claim by the Respondent of rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. 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 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s well-known FACEBOOK mark in mind when registering the disputed domain names. The Respondent has targeted the Complainant’s FACEBOOK mark, and in all likelihood registered the disputed domain names in order to exploit and profit from the Complainant’s mark. The Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. As previously noted, the Complainant’s FACEBOOK mark is distinctive and well known. It is clear beyond cavil that the Respondent was aware of and targeted the Complainant’s mark when registering the disputed domain names. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain names that could be made by the Respondent. The Respondent’s conduct smacks of opportunistic bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 names William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 2 See WIPO Overview 3.0, section 1.8 and cases cited therein. 3 Id. 4 See WIPO Overview 3.0 , section 1.11 .
Sole Panelist
Date: June 26, 2020
Full & Egal Universal Law Academy