The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Daniel Richter, Hong Kong, 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 June 3, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 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 June 10, 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 June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Respondent sent an email communication to the Center on June 14, 2021 expressing his willingness to drop the disputed domain name. On the same day, the Center informed the Parties that if they would like to explore settlement options, the Complainant should submit a request for suspension of the proceeding. No communication was received from the Complainant in this regard. On July 2, 2021, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 9, 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 was founded in 2004 and today is one of the leading providers of online social networking services counting over 2.8 billion monthly active users and having its “www.facebook.com” website ranked as the 7th most visited website in the world. The Complainant is the owner, amongst several others, of the United States trademark registration No. 3041791 for FACEBOOK registered on January 10, 2006 (Annex 8 to the Complaint). The disputed domain name “Do you want to earn a few extra bucks online? BECOME A MEMBER” The website also featured three posts in Czech related to money, dating, and vineyards, and some random letters in various places. 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. Under the Complainant’s view, the Respondent has abusively registered the disputed domain name which has been used in connection with a partially completed Wordpress-based page titled “Earn money online. Do you want to earn a few extra bucks online? BECOME A MEMBER”. Prior to submitting the Complaint, the Complainant’s representatives sent a message to the Respondent on May 20, 2021 through the Registrar’s online contact form, regarding the Respondent’s use of the disputed domain name. The Respondent did not reply. 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 incorporates the Complainant’s FACEBOOK trademark together with the descriptive word “money”, what does not prevent a finding of confusing similarity thereof. 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’s use of the disputed domain name in connection with a partially completed Wordpress-based site, inviting users to become members so as to “earn money online” cannot be considered as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy; and (c) the Respondent is not commonly known by the disputed domain name. 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. In addition to that, the Respondent’s physical address in the WhoIs record is clearly false since Hong Kong, China is mentioned as the Respondent’s country but the street and city relate to the Czech Republic, what further constitutes evidence of bad faith. The Complainant further submits that the Respondent is deliberately using the disputed domain name to intentionally attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark at to the source, sponsorship, affiliation or endorsement of its website. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On June 14, 2021, the Respondent sent an informal message to the Center stating that he did not want to renew the disputed domain name and was willing to “drop” the disputed domain name but given the lock status there was nothing that he could do. 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. The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety. The addition of the term “money” does not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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 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 given the Factual Background and Parties’ Contentions set out above, 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 as it considers appropriate pursuant to paragraph 14(b) of the Rules. Indeed the Respondent has used the disputed domain name in connection with a partially completed webpage inviting Internet users to become “members” so as to “earn money online”, what cannot be considered as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of 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 nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark plus a descriptive term), along with the Respondent’s willingness to “drop” the disputed domain name, and the implausibility of any good faith use to which the disputed domain name may be put; d) the Respondent gave a false physical address to which the Center’s Written Notice could not be delivered; and e) the Respondent not having replied to the message sent by the Complainant’s representatives prior to the submission of this Complaint. Further, 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. See WIPO Overview 3.0, section 3.1.4. 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. 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: July 23, 2021
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