The Complainants are Facebook, Inc. and WhatsApp, LLC, United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 王子晨 (Wang Zichen), China.
2. The Domain Names and RegistrarsThe disputed domain names
The disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2021. On June 11, 2021, the Center transmitted by email to Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and MAFF Inc (the “Registrars”) requests for registrar verification in connection with the disputed domain names. On June 16, 2021 and June 18, 2021, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On June 18, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 18, 2021, the Complainants submitted a request for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceeding commenced on June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 1, 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 A. ComplainantsThe Complainant Facebook Inc. is a company founded in the US in 2004, and one of the world’s leading providers of online social networking services, under the trade mark FACEBOOK.
The Complainant WhatsApp, LLC is a wholly-owned subsidiary of the Complainant Facebook Inc., founded in the US in 2009, and the operator of one of the world’s most popular communication applications, with over two billion active monthly users worldwide, under the trade mark WHATSAPP.
The Complainants’ “www.facebook.com” website is currently ranked 7th in the world according to
information company Alexa, and the Complainants’ Facebook and WhatsApp apps are ranked among the top mobile applications in the world.
The Complainants are the owners of numerous registrations in jurisdictions worldwide for their FACEBOOK, FB, and WHATSAPP trade marks (the “Trade Mark(s)”), including:
(i) Chinese registration No. 5251162 for the Trade Mark FACEBOOK, registered on September 21, 2009; US registration No. 3041791 for the Trade Mark FACEBOOK, registered on January 10, 2006; and International registration No. 1280043 for the Trade Mark FACEBOOK, registered on December 23, 2014;
(ii) European Union Trade Mark No. 008981383 for the Trade Mark FB, registered on August 23, 2011; and US registration No. 4659777 for the Trade Mark FB, registered on December 23, 2014; and
(iii) Chinese registration No. 21470703A for the Trade Mark WHATSAPP, registered on December 21, 2017; US registration No. 3939463 for the Trade Mark WHATSAPP, registered on April 5, 2011; and International registration No. 1085539 for the Trade Mark WHATSAPP, registered on May 24, 2011.
The Complainants are the owners of numerous domain names comprising the Trade Marks, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including
The Complainants’ websites are inaccessible in mainland China, but the Complainants and their Trade Marks have received widespread coverage in Chinese press (including in China’s state media People’s Daily).
B. RespondentThe Respondent is apparently an individual resident in China.
C. The Disputed Domain NamesThe disputed domain name
The disputed domain names
The disputed domain names
The disputed domain name
The disputed domain name
The disputed domain name
The disputed domain names
The disputed domain names
The disputed domain names
The disputed domain names
The disputed domains
The disputed domain names
The disputed domain names
The disputed domain names
None of the disputed domain names resolves to active websites.
The disputed domain names
The Complainants contend that the disputed domain names are confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings 6.1. Preliminary Issue: Consolidation of ComplainantsParagraph 10(e) of the Rules provides as follows:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
Past UDRP decisions suggest that a complaint may be brought by multiple complainants where (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
In the present proceeding, the Complainants have requested consolidation, due to their common legal and business interest in the Trade Marks; and their specific common grievance against the Respondent.
The Respondent has not made any submissions on this issue.
The Panel finds that the Complainants, as related entities sharing the same principal place of business, have common grievances against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants’ rights in a similar fashion.
The Panel also finds that it would be procedurally efficient and equitable for the Complainants to be consolidated.
In all the circumstances, the Panel therefore determines, under paragraph 10(e) of the Rules, that there be consolidation of the Complainants in this proceeding.
6.2. Preliminary Issue: Language of the ProceedingThe language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden being placed on the parties and undue delay to the proceeding.
The Complainants made the following submissions in support of its language request:
(i) the disputed domain names have been registered under the “.com” and “.xyz” gTLDs;
(ii) the disputed domain names are composed of Latin script (not Chinese characters) and identically reproduce the Complainants’ FACEBOOK, FB, and WHATSAPP Trade Marks;
(iii) many of the disputed domain names include English terms such as “fun(s)”, “good”, “happy”, “hi”, “hook”, “free”, “like”, “near”, “trust”, “and”, “money”, “service”, and “tech”, from which the Complainants infer that the Respondent is familiar with the English language and will not suffer any unfair prejudice if English is adopted as the language of the proceeding; and
(iv) conversely, it would be disproportionate to require the Complainants to submit the Complaint in Chinese, as this would result in additional expense and unnecessary delay for the Complainants for translation (see WIPO Overview 3.0, section 4.5.1).
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.3 Substantive Elements of the PolicyThe Complainants must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly SimilarThe Panel finds that the Complainants have rights in the Trade Marks acquired through use and registration.
With the exception of the disputed domain names
The disputed domain name
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The disputed domain name
The disputed domain names
The Panel therefore finds that the disputed domain names are confusingly similar to the relevant Trade Marks.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent 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 organisation) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark 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 trade mark or service mark at issue.
The Complainants have not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
To the contrary, the disputed domain names have not been resolved to active websites, and several are resolved to “deceptive site ahead” landing pages.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In addition, the Panel notes the nature of the disputed domain names, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad FaithThe Panel finds that, on the evidence herein, the Respondent has engaged in a pattern of conduct of registering disputed domain names comprising the Complainants’ Trade Marks in order to prevent the Complainants from reflecting their marks in corresponding domain names. Accordingly, the Panel finds that bad faith has been made out under paragraph 4(b)(ii) of the Policy.
The Panel finds there are further grounds for a finding of bad faith registration and use in light of the evidence of certain of the disputed domain names being resolved to “deceptive site ahead” landing pages.
The Panel further finds that, in light of the worldwide repute of the Trade Marks, and in light of the widespread media coverage obtained by the Complainants in mainland China, it is inconceivable that the Respondent was not aware of the Complainants and of their rights in the Trade Marks at the time of registration of the disputed domain names.
The Panel also finds that, in light of the repute of the Trade Marks, and on the evidence herein, there cannot be any actual or contemplated good faith use of the disputed domain names by the Respondent.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
7. DecisionFor 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
Sebastian M.W. Hughes
Sole Panelist
Dated: September 15, 2021