The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Amy Lyden, Australia. 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 20, 2020. On August 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 27, 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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. Informal communications from the Respondent were sent to the Center on September 10, 2020 and September 18, 2020. The Center appointed Mariya Koval as the sole panelist in this matter on October 14, 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, founded in 2004, is one of the world’s leading provider of online social-networking services. Since its launch in 2004, the Complainant rapidly developed considerable renown and goodwill worldwide. Today the Complainant has approximately 2.7 billion monthly active users, 1.79 billion daily active users on average worldwide (as of July 30, 2020) and 13.5 million followers on Twitter. With approximately 85 percent of its daily active users outside the United States and Canada, the Complainant’s social-networking services are provided in more than 70 languages. In addition, the Complainant service is also available for mobile devices, and in recent years it has consistently ranked amongst the top “apps” in the market. The Complainant's Facebook Trademark (the “FACEBOOK Trademark”) is currently one of the most famous online trademarks in the world. In 2019, the FACEBOOK Trademark ranked 14th in Interbrand’s Best Global Brands report. The Complainant is the owner of numerous FACEBOOK Trademark registrations in many jurisdictions throughout the world, including but not limited to the following: - United States Trademark Registration No. 3,122,052 in classes 35 and 38, registered on July 25, 2006; - Australian Trademark Registration No. 1100642, registered on March 31, 2008; - European Union Trademark Registration No. 009151192 in classes 9, 35, 36, 38, 41, 42 and 45, registered on December 17, 2010; - International Trademark Registration No. 1075094 in classes 9, 35, 36, 38, 41, 42 and 45, registered on July 16, 2010, The Complainant has also made substantial investments to develop a strong presence online by being active on various social-media platforms. It operates a number of domain name registrations, which incorporate the FACEBOOK Trademark, among which are: - - - - - - The Disputed Domain Name was registered on December 10, 2010. At the date of the filing of the Complaint and of this Decision, the Disputed Domain Name does not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has developed considerable reputation and goodwill worldwide in connection with a wide variety of goods and services. Its main website “www.facebook.com” is currently ranked as the 4th most visited website in the world according to information company Alexa. The Complainant owns numerous registrations for FACEBOOK Trademark in many jurisdictions throughout the world. The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s FACEBOOK Trademark in view of the Disputed Domain Name incorporates the Complainant’s Trademark in its entirety as its leading element, together with the descriptive term “threads”, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name in view of the following: - the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services; - the Respondent is not a licensee of the Complainant, he is not affiliated with the Complainant in any way; - the Complainant has not granted any authorization for the Respondent to make use of its Trademark, in a domain name or otherwise; - the Disputed Domain Name does not resolve to an active website. To the best of the Complainant’s knowledge, the Disputed Domain Name has not been used in connection with any active website or for any other purpose (such as for email) since its initial registration in December 2010; - the Respondent did not respond to the Complainant’s pre-Complaint cease-and-desist letter; - the Respondent is not commonly known by the Disputed Domain Name; to the best of the Complainant’s knowledge, the Respondent has not secured any trademark registrations for “facebook” or “facebook threads”, as reflected in the Disputed Domain Name. The Complainant also submits that the inclusion of the term “threads” alongside the Complainant’s FACEBOOK Trademark into the Disputed Domain Name carries with it a high risk of implied affiliation with the Complainant since conversation threading, i.e., visually grouping messages or comments with their replies, commonly referred to as “topic threads” or simply “threads”, features heavily in the Facebook user interface. The Complainant further alleges that the Disputed Domain Name was registered and is being used in bad faith in view of the Respondent could not credibly argue that she did not have prior knowledge of the Complainant’s Trademark at the time she registered the Disputed Domain Name in 2010, at which time the Complainant’s social network had already amassed over 500 million monthly active users. The Complainant contends that despite its efforts to contact the Respondent, the Respondent has not come forward with any evidence of bona fide intent in relation to the Disputed Domain Name. The Disputed Domain Name does not resolve to an active website and does not otherwise appear to have been used in connection with an active website or for any other purpose since its registration in 2010. Such non-use of the Disputed Domain Name would not prevent a finding of bad faith use under the doctrine of passive holding. The Complainant further asserts that as a result of its longstanding and widespread use, its FACEBOOK Trademark has become exclusively associated with the Complainant. The Complainant submits that when confronted with the combination of the Complainant’s Trademark together with the term “threads”, many Internet users would be confused and wrongly assume that the Disputed Domain Name is owned by or otherwise affiliated with the Complainant. B. Respondent The Respondent sent two informal email communications to the Center, where she indicated that she wishes to relinquish her registration of the Disputed Domain Name immediately. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. 6.1. Preliminary Issue: Delay in bringing the Complaint The Complainant indicated, with supporting evidence, that the Disputed Domain Name was registered in 2010. Therefore, it raises the issue of whether the Complainant has delayed bringing proceedings, and whether this is a matter that counts against it. In accordance with section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) panels have recognized that mere delay between the registration of a domain name and the filing of a UDRP complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. The time between the registration date of the Disputed Domain Name in 2010 and the filing of the Complaint in 2020 is a significant period of time. However, previous UDRP panels have recognized that the Policy contains no limitation period for making a claim and a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. In view of the above, the Panel has not drawn a negative inference from the delay in the filing of the Complaint. 6.2. Substantive Issues A. Identical or Confusingly Similar The Complainant has properly asserted its rights in the FACEBOOK Trademark due to the long use and number of registrations globally. The Panel agrees with the Complainant that its FACEBOOK Trademark is highly distinctive and famous throughout the world. It has been continuously and extensively used since 2004 in connection with the Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide. The Disputed Domain Name incorporates the FACEBOOK Trademark in its entirety with addition of the term “threads”, combined with the gTLD suffix “.com”. The gTLD “.com” typically is not taken into account for purposes of the first element under the Policy. In accordance with the 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) would not prevent a finding of confusing similarity under the first element. In this case, the addition of the term “threads” to the FACEBOOK Trademark does not prevent a finding of confusing similarity. Also, pursuant to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests The Complainant alleges that the Respondent has no rights with respect to the FACEBOOK Trademark, she is not commonly known by the Disputed Domain Name, she is neither a licensee of the Complainant, nor is affiliated with the Complainant in any way. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant has continuously and extensively used its FACEBOOK Trademark since 2004 in connection with its social network, having rapidly acquired considerable goodwill and renown worldwide. According to the section 2.5.1 of the WIPO Overview 3.0, even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In this case, the Disputed Domain Name contains the Complainant’s Trademark in its entirety and addition of the term “threads” which enhances an impression of the Respondent’s relation with the Complainant (that is not consistent with the reality), that, correspondingly, cannot constitute fair use of the Disputed Domain Name. At the date of this decision the Disputed Domain Name, in spite of its registration date was ten years ago, does not resolve to an active website, and is not being used in the promotion of any business or any other online service that might give rise to the Respondent being commonly known by the Disputed Domain Name. Moreover, taking into account that the FACEBOOK Trademark was already highly distinctive and well-known at the date of registration of the Disputed Domain Name, the Panel also finds that the Disputed Domain Name could not legitimately be registered by anyone except the Complainant, other than for creating an impression of the association with the Complainant. Furthermore, in this case, the Respondent, having a chance to invoke any circumstances for demonstration of his rights or legitimate interests in the Disputed Domain Name, did not submit any response to the cease-and-desist letter, sent by the Complainant, and to the Complaint and consequently did not rebut the Complainant’s prima facie case. In view of the foregoing, the Panel finds that the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you [respondent] 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 Panel finds that the Respondent registered the Disputed Domain Name in 2010, which is more than five years after the Complainant started to use its FACEBOOK Trademark and more than two years when the Complainant obtained its first Trademark registration in the United States of America. At the time of the Respondent registered the Disputed Domain Name in 2010, the Complainant’s social network had already over 500 million monthly active users and its FACEBOOK Trademark was already well-known. Taking into consideration the statements submitted in this case, the Panel considers it is clear that the Disputed Domain Name was registered and is being used in bad faith in view of incorporating the well-known Complainant’s FACEBOOK Trademark in the Disputed Domain Name in order to intentionally attract the Internet users for commercial gain. The Disputed Domain Name incorporates the FACEBOOK Trademark in its entirety with addition of the term “threads”, which in its turn has a meaning of “conversation threading”, i.e., visually grouping messages or comments with their replies, commonly referred to as “topic threads” or simply “threads”, features heavily in the Facebook user interface. The Panel agrees with the Complainant that the Disputed Domain Name itself appears to make direct reference to a feature of the Complainant’s user-facing product. Given the distinctiveness and popularity of the Complainant’s FACEBOOK Trademark, it is implausible that the Respondent registered the Disputed Domain Name without prior knowledge of the Complainant and its Trademark. Moreover, incorporating the term “threads” in the Disputed Domain Name, gives to the Panel the ground also to conclude that the Disputed Domain Name was registered with the purpose to mislead the Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s social network services that is not true. In the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of the Complainant’s FACEBOOK Trademark is highly distinctive and was famous throughout the world, including Australia, already in 2010. At the date of this Decision, the Disputed Domain Name does not resolve to an active website and does not otherwise appear to have been used in connection with an active website or for any other purpose since its registration in 2010, that also support a bad faith in this case. According to the section 3.3 of the WIPO Overview 3.0, 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 formal 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. In this case, while the Respondent has not used a privacy service all of the other above conditions are met. Furthermore, the Respondent did not respond to the Complainant’s cease-and-desist letter which under these circumstances, also suggest the Respondent’s bad faith registration and use of the Disputed Domain Name. 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 Mariya Koval
Sole Panelist
Date: October 28, 2020
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