The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Gheorghe Matei, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2020. On August 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 9, 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 was founded in 2004 and today is one of the leading provider of online social networking services counting over 2.6 billion monthly active users and having its “www.facebook.com” website ranked as the 4th most visited website in the world. The Complainant is the owner, amongst others, of the trademark FACEBOOK registered in the United States under No. 3122052, registered on July 25, 2006 (Annex 8 to the Complaint). The disputed domain name The Complainant asserts to be the world’s leading provider of online social networking services, actively promoting and using the FACEBOOK trademark throughout the world. Under the Complainant’s view, the Respondent is using the disputed domain name in connection with a social media service that closely resembles that of the Complainant, with a search bar at the top of the page, a field to create a “post” below the search bar, a “news feed” directly below that, and navigation icons at the left of the page, as well as highly similar icons as those used by the Complainant (Annexes 4 and 9 to the Complaint). The Complainant further states that the Respondent created an app which interface closely resembles the Complainant’s FACEBOOK app, making use of the same color scheme and similar icons to those used by the Complainant (Annexes 10 and 11 to the Complaint). Prior to submitting the Complaint, the Complainant’s representatives sent a letter to the Respondent on October 18, 2019, regarding the Respondent’s use of the disputed domain name and app, followed by two reminders on October 31, 2019, and November 22, 2019. On January 6, 2020, the Complainant’s representatives in Romania sent a further cease-and-desist letter to the Respondent in Romanian (Annex 12 to the Complaint) and the Complainant states that the Respondent subsequently called the Complainant’s representatives in Romania and advised that he was unwilling to comply with the Complainant’s requests. The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s notorious trademark, creating a likelihood of confusion, given that the disputed domain name comprises a variant of the Complainant’s FACEBOOK trademark whereby the letter “b” is replaced with the letters “gl” and the letter “k” with the letter “b”, consisting therefore of a misspelling thereof and yet visually and phonetically similar. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that: (a) the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark or any variation thereof; (b) the Respondent has sought to create a competing social network while taking advantage of a perceived connection with the Complainant resulting from the confusing similarity between the disputed domain name and the Complainant’s trademark (as attested by actual user confusion – Annex 10 to the Complaint), what cannot be considered as a bona fide offering of goods or services in accordance with Paragraph 4(c)(i) of the Policy; (c) the Respondent is not commonly known by the disputed domain name; (d) the Respondent’s use of the disputed domain name and associated app is intended to create confusion with the Complainant and to allow the Respondent to earn revenues from the advertising (Annex 10 to the Complaint) contained in the Respondent’s app. As to the registration of the disputed domain name in bad faith the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain name considering that in 2017 the Complainant’s social networking service had already amassed close to 2 billion users. The Complainant further states that the Respondent is deliberately using the disputed domain name in connection with a competing social media service so as to disrupt the Complainant’s business, in order to create a misleading impression of association with the Complainant. Thus, according to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed 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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar The Complainant has established rights in the FACEBOOK trademark duly registered in several countries around the world (Annex 8 to the Complaint). In this case, the replacement of the letter “b” with the letters “gl” and of the letter “k” with the letter “b”, characterizes a misspelling of the Complainant’s notorious FACEBOOK trademark, still enabling the reader to sufficiently recognize the “aspects of the relevant mark” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.9), given that the disputed domain name is yet visually and phonetically similar therewith. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Indeed the Respondent is using the disputed domain name, which is confusingly similar with the Complainant’s famous trademark, to resolve to a website offering identical or similar services to those offered by the Complainant. Such cannot be considered a bona fide offering of goods or services under the Policy. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has also been met. C. Registered and Used in Bad Faith This case presents the following circumstances which indicate bad faith registration and use of the disputed domain name: a) the Complainant’s trademark is registered worldwide and is well known; b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain name; c) the Respondent evidently was aware of the Complainant and its trademarks in view of the contents of the website that resolves from the disputed domain name; d) the Respondent gave a false physical address to which the Center’s communications could not be delivered; e) the reproduction of the Complainant’s website’s look-and-feel, as seen above, has already created actual confusion (Annex 10 to the Complaint) as to the source, sponsorship, affiliation or endorsement of such website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 Wilson Pinheiro Jabur
Sole Panelist
Date: September 23, 2020
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