Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondents are Antonio Priore, TechnoNet Group Inc., United States; and Antonio Priore, Web And Apps, United States. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2021. On March 12, 2021, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the disputed domain names. On March 25, the First Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 12, 2021, the Center transmitted by email to the Second Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2021, the Second Registrar transmitted by email to the Center its verification response confirming that 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 Respondents of the Complaint, and the proceedings commenced on April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. There were a number of informal emails from Respondents between May 2 and June 21, 2021. Upon receipt of Respondents’ extension request, on May 14, 2021, the Center confirmed that the Response due date had been extended to May 17, 2021 pursuant to paragraph 5(b) of the Rules. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on July 5, 2021. 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 Complainant, founded in 2004, is the world’s leading provider of online social networking services. It is the proprietor of numerous registrations for its FACEBOOK mark, including the following: Complainant operates its primary business website at “www.facebook.com.” It has also registered numerous domain names under various Top-Level Domains (“TLDs”) comprising its FACEBOOK mark. The disputed domain names The disputed domain names do not resolve to active websites, but to parking pages of the Registrar indicating that the respective disputed domain names may be for sale and inviting Internet visitors to contact the Registrar by telephone for more information. The record contains a copy of Complainant’s cease-and-desist letter to Respondents dated January 27, 2021, and copies of the ensuing e-mail correspondence between the Parties. As the Parties could not reach agreement on transfer of the disputed domain names, Complainant brought the present proceedings. 5. Parties’ Contentions A. Complainant Complainant requests consolidation of the proceedings for the following reasons. Although the disputed domain name Under the first element, Complainant states that it operates the world’s leading social media platform, and that “www.facebook.com” is the sixth-most visited website in the world. The FACEBOOK mark is duly registered to Complainant. The disputed domain names contain the FACEBOOK mark in its entirety and are confusingly similar to the mark. Under the second element, Complainant states that Respondents have no rights or legitimate interests in the disputed domain names. Respondents have not made any bona fide offering of goods or services under the disputed domain names. Complainant has not granted Respondents any type of permission to use its mark in the disputed domain names or otherwise. To Complainant’s knowledge, the disputed domain names have never resolved to active websites. They currently resolve to parking pages indicating that they may be for sale. Respondents are not commonly known by the disputed domain names. Respondents, by passively holding the disputed domain names, is not engaging in legitimate noncommercial or fair use of the disputed domain names. Under the third element, Complainant states that the FACEBOOK mark is highly distinctive and famous throughout the world. It has been in continuous use since 2004. It would be inconceivable for Respondents to argue that they lacked knowledge of Complainant when they registered the disputed domain name Complainant requests transfer of the disputed domain names. B. Respondents Respondents made a number of -mail communications with the Center concerning the proceedings and indicating their willingness to settle the dispute, but did not reply in substance to Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue - Consolidation of Multiple Respondents Pursuant to paragraph 10 of the Rules: (a) the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. […] (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. The principles to assess a request to consolidate multiple respondents are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. Noting the circumstances of the case, the Panel considers all three disputed domain names to be under common control. The telephone number and email address of Respondents as confirmed by the First Registrar and Second Registrar are identical, and Respondents’ correspondence with Complainant and the Center indicates that Respondents have registered all three disputed domain names. Moreover, Respondents do not challenge Complainant’s assertions to this effect. Accordingly, the Panel accepts Complainant’s request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Respondents are hereinafter referred to as “Respondent”. Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) Respondent has registered and is using the disputed domain names in bad faith. B. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the FACEBOOK mark through registrations in the United States and numerous other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1. In comparing Complainant’s FACEBOOK mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark. Each disputed domain name begins with Complainant’s mark, followed by dictionary terms, namely, “deals,” “gifts,” and “money transfer,” respectively. It is the consensus view of UDRP panels that, in such cases, the addition of the terms does not prevent a finding of confusing similarity because Complainant’s mark is clearly recognizable within the disputed domain names. See, for example, WIPO Overview 3.0, section 1.8, and UDRP cases such as Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd,WIPO Case No. D2001-0110; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; LinkedIn Corporation v. Daphne Reynolds,WIPO Case No. D2015-1679. It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”), for example, “.org” and “.com” in this case, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, 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) Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) 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 circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized by Complainant and is not commonly known by the disputed domain names. The disputed domain names contain Complainant’s distinctive and well-known mark, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names. Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain names, or that there are any circumstances or activities that would establish Respondent’s rights therein. Rather, the disputed domain names are inactive and appear to be available for purchase. Respondent has previously engaged in a pattern of registering domain names corresponding to Complainant’s FACEBOOK mark. Such use cannot establish rights or legitimate interests. See WIPO Overview 3.0, section 2.5.2, and cases cited thereunder. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its distinctive and well-known FACEBOOK mark significantly predate the registration of the disputed domain names. The disputed domain names reflect Complainant’s FACEBOOK mark in its entirety, together with dictionary terms. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4. The Panel finds that Respondent has demonstrated bad faith by passive holding of the disputed domain names and by making them available for sale. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. Complainant has provided sufficient evidence that its FACEBOOK mark is well known, and Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain names. Moreover, Respondent has engaged in a pattern of conduct of registering domain names containing Complainant’s FACEBOOK mark. While Respondent’s willingness to settle the dispute is noted, it does not mitigate a finding of bad faith. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
- United States Trademark Registration No. 3041791 for FACEBOOK (word mark), registered on January 10, 2006, stating a date of first use in commerce of February 4, 2004, for services in class 38;
- International Registration No. 772524 for FACEBOOK (word mark), registered on December 3, 2001 for goods and services in classes 16, 35, 38, and 41;
- European Union Trademark No. 002483857 for FACEBOOK (word mark), registered on June 13, 2003 for goods and services in classes 16, 35, 38, and 41.
Web And Apps. The disputed domain name
Sole Panelist
Date: July 30, 2021
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