The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Yumei Luo, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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 September 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2020. The Respondent sent communications to the Center on September 18, 2020 and on September 22, 2020. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on September 29, 2020. The Center appointed Kraus, Daniel as the sole panelist in this matter on October 1, 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 providers of online social networking services counting over 2.5 billion monthly active users and having its “www.facebook.com” website ranked as the 5th most visited website in the world. The Complainant is the owner, amongst others, of the following trademarks: - Chinese Trademark No. 5251162, FACEBOOK, registered on September 21, 2009; - Chinese Trademark No. 6389501, FACEBOOK, registered on March 28, 2010 with a priority date to May 24, 2007; - United States Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004); and - International trademark FACEBOOK under No. 772524, registered on December 3, 2001. The disputed domain name According to the Complainant’s research, in addition to the disputed domain name, the Respondent also previously registered other domain names targeting well-known third party trademarks. 5. Parties’ Contentions A. Complainant 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. The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that: (a) the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark or any variation thereof; (b) The Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name resolves to a parking page displaying pay-per-click advertising, from which the Respondent presumably derives revenue. Such use of the disputed domain name cannot constitute bona fide use under the Policy; (c) the Respondent is not commonly known by the disputed domain name; and (d) the Respondent has not come forward in reply to the Complainant’s cease and desist letter to assert any claim of rights or legitimate interests in the disputed domain name based on any legitimate noncommercial or fair use. The Complainant further asserts that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. As regards 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 must have been known to the Respondent, even though access is blocked in China. In addition, by including the dictionary term “beauty” alongside the Complainant’s FACEBOOK trademark, the disputed domain name carries with it a risk of implied affiliation with the Complainant. This cannot constitute fair use as it impersonates or suggests sponsorship by the trademark owner. As to use in bad faith, the Complainant submits that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites. The disputed domain name is being used to host a parking page displaying pay-per-click advertising. Presumably, the Respondent or another party derives click-through revenue from the presence of such links on the website to which the disputed domain name resolves. Finally, the Complainant submits that the Respondent's failure to reply to the Complainant's message sent via the registrar’s online form prior to the filing of the Complaint is also indicative of the Respondent's bad faith. B. Respondent The Respondent merely acknowledged receipt of the Complaint and stated that he would “close the domain”. The Respondent did not substantively 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). The Panel finds that the disputed domain name reproduces the Complainant’s trademark in its entirety. The addition of the dictionary term “beauty” does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 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 responding bluntly 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. Indeed the Respondent is using the disputed domain name in connection with a parked webpage displaying pay-per-click links, which cannot be considered here a bona fide offering of goods or services under the Policy. Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well-known trademark with an additional term, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been sufficiently rebutted by the Respondent to avoid such a finding. The second element of the Policy has also been met. C. Registered and Used in Bad Faith There is reasonable evidence that the Respondent registered the disputed domain name in bad faith. Given the distinctive and global significance of the 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 name. 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. Besides, the described use of the disputed domain name, which is confusingly similar to the Complainant's trademarks, to attract Internet users clearly for commercial gain is considered by prior UDRP panels to fall within the scope of paragraph 4(b)(iv) of the Policy. See in particular Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins.,WIPO Case No. D2010-1699, according to which “[t]he generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page”. Finally, the Respondent’s failure to reply to the Complainant’s message sent via the registrar’s online form prior to the filing of this Complaint is also indicative of the Respondent’s bad faith (see Aktiebolaget Electrolux v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com and Kriengsak Vadpanich,WIPO Case No. D2012-1132, according to which “The Panel agrees with the Complainant that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, may be considered relevant in a finding of bad faith”. 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 name 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 Daniel Kraus
Sole Panelist
Date: October 15, 2020
Full & Egal Universal Law Academy