The Complainant is Facebook, Inc., United States of America (“United States” and “USA”), represented by Tucker Ellis, LLP, USA.
The Respondent is Tien Nguyen, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 22, 2021. 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. A substantive mail Response was filed with the Center on June 2, 2021. The Center appointed Dawn Osborne as the sole panelist in this matter on June 22, 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 The Complainant owns the trade mark FACEBOOK registered, inter alia, in the USA under trade mark No. 3,122,052 since July 25, 2006 for social networking services with first use in commerce recorded as 2004. It has used the mark FACEBOOK PAY since 2019. It owns The Domain Name registered in September 8, 2015 has been offered for sale generally for USD 50,000 and to the Complainant for USD 2,000. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Complainant owns the trade mark FACEBOOK registered, inter alia, in the USA under trade mark No. 3,122,052 since July 25, 2006 for social networking services with first use in commerce recorded as 2004. It has used the mark FACEBOOK PAY since 2019. It owns The Domain Name registered in September 8, 2015 is confusingly similar to the Complainant’s FACEBOOK trade mark adding the generic word “coin” which does not prevent said confusing similarity and “.com” is a generic Top Level Domain (“gTLD”) indicator Internet users must use as part of its address and should be omitted in the confusing similarity comparison. The Respondent does not have any rights or legitimate interests in the Domain Name. The Domain Name was set up to reach a landing page offering the Domain Name for sale for USD 50,000, a sum far in excess of the costs of registration. This is not a bona fide offering of services or goods or a legitimate noncommercial or fair use. The Respondent is not commonly known by the Domain Name and has never been given permission by the Complainant to use the Complainant’s trade mark for any purpose. The Domain Name has been registered and used in opportunistic bad faith. Offering it for sale for a sum in excess of registration costs demonstrates the Respondent’s primary intention behind registering the Domain Name is financial gain. B. Respondent The Respondent did not put in a formal Response but sent an informal email in Vietnamese on May 28, 2021 asking for further information, and offered in an email in English dated June 2, 2021 to let the Domain Name expire or to transfer it to the Complainant for USD 2,000. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name registered in September 8, 2015 consists of the Complainant’s FACEBOOK trade mark (registered, inter alia, in the USA under trade mark No. 3,122,052 since July 25, 2006 for social networking services with first use in commerce recorded as 2004), the word “coin” and the gTLD “.com”. The Complainant’s FACEBOOK trade mark is well known. The addition of the dictionary word “coin” does not prevent confusing similarity between the Domain Name and the Complainant’s trade mark which is still recognisable in the Domain Name. The gTLD “.com” does not distinguish the Domain Name from the Complainant’s trade mark as the “.com” element of the Domain Name is merely functional in this case and, in such a context, traditionally disregarded for the purposes of the Policy. Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights. As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The Respondent is not authorised by the Complainant and is not commonly known by the Domain Name. The site attached to the Domain Name offered the Domain Name containing the Complainant’s trade mark for sale for USD 50,000 and the Respondent offered in these proceedings to transfer the Domain Name to the Complainant for USD 2,000. Offering a domain name containing a well known mark for sale for sums in excess of the costs of registration is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the paragraph 4(a)(ii) of the Policy. C. Registration and Use in Bad Faith The Domain Name containing the Complainant’s distinctive and well known FACEBOOK trade mark has been offered for sale for profit for USD 50,000 generally and for USD 2,000 to the Complainant in these proceedings. These are both sums in excess of out of pocket registration costs relating to the Domain Name. The offering for sale of a Domain Name containing a well known mark for sums in excess of out of pocket costs of registration is commonly held by Panels to be registration and use in bad faith under the paragraph 4(b)(i) of the Policy. As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith primarily for the purposes of sale for profit and has satisfied the paragraph 4(a)(iii) 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 Domain Name Dawn Osborne
Sole Panelist
Date: July 1, 2021
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