The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Geza Tamas Hadartis, Gezahadarits, Hungary. 2. The Domain Names and Registrars
The disputed domain name The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 12, 2020, the Center transmitted by email to In2net Network Inc. a request for registrar verification in connection with the 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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020. The Center appointed Leon Trakman as the sole panelist in this matter on June 30, 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 leading provider of online social-networking services. In addition to a large number of domain names registered by the Complainant, it has registered the following trademarks: United States Trademark Registration No. 3,122,052, FACEBOOK, registered on July 25, 2006; International Registration No. 1075094, FACEBOOK, registered on July 16, 2010, 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. The disputed domain name The Complainant alleges that, pursuant to paragraph 4(a) of the Policy: 1. The disputed domain names registered by the Respondent are confusingly similar to the Complainant’s trademark in respect of which the Complainant has rights; The Complainant also highlights, inter alia, the worldwide recognition of its trademark and the number of users who access its website, including 2 billion users at the time that the Respondent registered the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusing Similarity The Panel holds that the disputed domain names are confusingly similar to the Complainant’s trademarks, contrary to Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1). Firstly, the Complainant owns numerous trademark registrations for FACEBOOK in many jurisdictions throughout the world. This more that satisfies the requirement that: “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing, to file a UDRP case.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0“), section 1.2.1.) The Panel therefore holds that the Complainant has trademark rights in FACEBOOK in accordance with paragraph 4(a)(i) of the Policy. Secondly, the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s FACEBOOK trademark in its entirety. The dictionary terms, “fashion” and “goods”, do not prevent a finding of confusing similarity. The WIPO Overview 3.0, makes it clear that: “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” (See WIPO Overview 3.0, section 1.8). Expressed conversely, the combination of the Complainant’s FACEBOOK trademark together with the terms “fashion” and “goods” do not prevent a finding of confusing similarity between either of the disputed domain names and the Complainant’s FACEBOOK trademark, primarily because the Complainant’s trademark is clearly identifiable in the disputed domain names. For reasoning to a similar effect, see ASOS plc v. Francis King,WIPO Case No. D2017-2235. The use of the generic Top-Level Domain (“gTLD”), “.com” does not detract from that confusing similarity. gTLDs are widely held as being standard registration requirements. See WIPO Overview 3.0, section 1.11.1. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s FACEBOOK trademark. B. Rights or Legitimate Interests The Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names, contrary to the requirements of the Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2). The Panel acknowledges that the Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. However, once the Complainant has established a prima facie case that the Respondent lacks such rights or legitimate interests, the Respondent must then discharge the burden of rebuttal. If the Respondent fails to satisfy that burden, the Complainant will have satisfied the requirement that the Respondent does not have rights or legitimate interests in the disputed domain names. See WIPO Overview 3.0, section 2.1. The Panel will reach a determination on each element on the burden of proof. The Complainant has established a prima facie case that the Respondent has no rights or interests in the disputed domain names. The Complainant alleges that the Respondent is not commonly known by the disputed domain names, or to a name that corresponds to or otherwise approximates the disputed domain names, within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent is not a licensee of the Complainant, nor affiliated with the Complainant in any capacity. There is no evidence on record that the Respondent has secured any trademark or service mark registrations for “facebook”, “facebook fashion” or “facebook goods” that provides it with rights or legitimate interests in the disputed domain names. Nor has the Complainant authorized the Respondent to use its FACEBOOK trademark in any way not limited to the disputed domain names. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain names, such as to promote any business or other online service establishing it has a right or legitimate interest in the disputed domain names, or is using them to make a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. These cumulative factors, demonstrate, firstly, that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names and secondly, that the Respondent has failed to discharge the burden of rebutting the prima facie case made by the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith The Panel determines that the disputed domain names were registered and are being used in bad faith, contrary to Policy, paragraph 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3). There is reasonable evidence that the Respondent registered the disputed domain names in bad faith. Given the distinctive and global significance of Complainant’s FACEBOOK trademark since 2004, it is difficult to conceive that the Respondent was not reasonably aware of it prior to registering the disputed domain names. The global visibility and recognition of the Complainant’s trademark is affirmed by a series of prior UDRP panels. See, e.g., Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547. Prior UDRP panels have also highlighted that it would be “disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant’s rights.” Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145; Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan,WIPO Case No. D2015-0614. It is true that the Respondent’s awareness of the Complainant’s history and reputation could depend in part on the time of registering the disputed domain names. That awareness is more likely the later the registration of those disputed domain names, given that the global profile of Facebook has grown with the passing of time, in an era of global data collection, surveillance and dissemination. The Complainant adduces evidence that the Complainant’s social network had already attracted over 2 billion users to its website by December 2019. In addition, the Complainant has submitted evidence that the Respondent used to be the registrant of multiple other domain names including the Complainant's trademark, which is further evidence that the Respondent was aware of and was targeting the Complainant and its trademark at the time of registering the disputed domain names. The Panel also finds that the Respondent has engaged in bad faith use of the disputed domain names. According to the evidence submitted, the disputed domain names are not being actively used, the “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (Section 3.3 of the WIPO Overview 3.0). See tooTelstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In considering all the circumstances identified in section 3.3 of the WIPO Overview 3.0, there is evidence of bad faith in the accumulated findings of this Panel. In particular, the disputed domain names are confusingly similar to the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain names; and the Respondent registered the disputed domain names in bad faith. In further support of the Respondent’s bad faith use is the Panel’s finding that the Complainant’s trademark is internationally known and globally accessed and that the Respondent is likely to have been aware of these facts at the time of registering the disputed domain names. Moreover, a reasonable Internet user would most likely assume that the disputed domain names were owned by or affiliated with, or otherwise endorsed by the Complainant’s business. Not unimportantly, the Respondent has failed to reply to the Complainant’s “cease and desist” letter, nor presented reasons by any other means to rebut its bad faith registration and use of the disputed domain names. This evidence further affirms that the Respondent was acting, again passively, in bad faith. Even though the Respondent was not initially identified and that the “cease and desist” letter was provided to the privacy service provider, it is reasonable to assume that the provider would have passed that letter on to the Respondent. In effect, in being silent, namely, in not answering the “cease and desist” letter, the Respondent not only concealed its identity, but sought also to avoid the Complainant’s reasonable expectation that the Respondent would reply. The passive holding of a domain name, including an internationally known trademark about which the Respondent is reasonably aware is widely recognized as a circumstance that may well constitute evidence of bad faith. The lengthy time since the Respondent had registered the disputed domain names also does not diminish the fact that the Complainant was already widely known at that time and most likely by the Respondent as well. The passive holding of the disputed domain names does not exclude the prospect that, at some future time, the Respondent might seek to profit from their sale. Indeed, their market value would most certainly increase as the Complainant’s business continued to grow since the date of the Respondent’s registering the disputed domain names and is likely to continue to increase in value in the future. It is conceivable that the Respondent did engage in negotiations to sell, rent, or otherwise profit from the disputed domain names with an entity other than the Complainant, or might so intend in the future, but there is no evidence on record that the Respondent did so engage. Given the aforementioned, the Panel finds that the Respondent registered and is using the disputed domain names 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 names Leon Trakman
European Union Trade Mark No. 009151192, FACEBOOK, registered on December 17, 2010; and
2. The Respondent has no rights or legitimate interests in the dispute domain names; and
3. The Respondent registered, used and is continuing to use the disputed domain names in bad faith.
Sole Panelist
Date: July 9, 2020
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