The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Efukikata Efet, Nigeria. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 16, 2021, 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 July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent sent an informal response by email to the Center on July 24, 2021, and a Standard Settlement Form, signed by it, in which it agreed to transfer the Domain Names to the Complainant. The Center notified the Parties by email of July 26, 2021 that proceedings will be suspended if the Parties wish to explore settlement options and the Complainant submits a request for suspension by July 31, 2021. Apparently, no such request has been submitted. On August 11, 2021, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 24, 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 Founded in 2004, the Complainant is a leading provider of online social-media and social-networking services. Currently, the Complainant has approximately 2.85 billion monthly active users and 1.88 billion daily active users on average worldwide (as of March 31, 2021). Its main website “www.facebook.com” is currently ranked as the 7th most visited website in the world according to information company Alexa. With approximately 85 percent of its daily active users outside the United States and Canada, the Complainant’s social-networking services are provided in more than 70 languages. In addition, the Complainant’s “Facebook” service is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market. In 2020, the Facebook brand ranked 13th in Interbrand’s Best Global Brands report. The Complainant is the owner of a number of trade mark registrations for FACEBOOK in jurisdictions throughout the world, including but not limited to (hereafter the “Trade Marks”): - United States Trademark registration No. 3041791, FACEBOOK, registered on January 10, 2006; - European Union Trade Mark registration No. 005585518, FACEBOOK, registered on May 25, 2011; and - International Registration No. 1075094, FACEBOOK, registered on July 16, 2010. The Domain Names have been registered on the following dates: - The Domain Name The Domain Name The Domain Name The Respondent previously registered several other domain names containing the FACEBOOK trade mark, including On April 12, 2021, the Complainant sent a cease and desist letter to the Respondent, to which the Respondent did not react. 5. Parties’ Contentions A. Complainant The Complainant points out that it has numerous trade mark registrations for the FACEBOOK trade mark in jurisdictions throughout the world, including the Trade Marks, and that the Domain Names contain FACEBOOK in its entirety, together with various descriptive terms. The Complainant submits that the inclusion of the terms “basics”, “center”, “help”, “learn”, “password”, and “recover” in the Domain Names does not prevent a finding of confusing similarity with the Trade Marks, while the generic Top-Level Domains (“gTLDs”) “.com” and “.org” may be disregarded for the purposes of assessment of confusing similarity, as they are viewed as standard registration requirements. The Complainant concludes that the Domain Names are confusingly similar to the Trade Marks. The Complainant submits that the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, as it is not a licensee of the Complainant, nor has the Respondent been authorized by the Complainant to make any use of the Trade Marks, in a domain name or otherwise. Furthermore, the Complainant states that the Domain Names redirect to various third-party websites which offer, or contain sponsored links to websites offering paid products or services. According to the Complainant, the Respondent and/or the operator of such websites may benefit from revenue generated by such links and websites. The Complainant contends that Internet users viewing the Domain Names as hyperlinks are likely to be misled into believing that the Domain Names are owned by or otherwise affiliated with the Complainant. According to the Complainant, the Respondent cannot credibly claim to be commonly known by the Domain Names, or a name corresponding to the Domain Names, within the meaning of paragraph 4(c)(ii) of the Policy, as the Respondent is Efukikata Efet, whose name bears no resemblance to the Domain Names. Furthermore, the Complainant contends, the Respondent is not using the Domain Names in such a manner that it can be said to be commonly known by the Domain Names. The Complainant states that it is not aware of the Respondent having acquired any trade mark rights for the FACEBOOK trade mark. Nor is the Respondent, according to the Complainant, making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy. The Complainant submits that the Respondent is using the Domain Names to drive Internet users to third-party websites, each of which is commercial in nature, either by virtue of the goods and services offered therein, or in terms of sponsored advertising on the respective websites. The Complainant submits that the above factors combined establish a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant asserts that the Domain Names were registered and are being used in bad faith and in this context points out that the Trade Marks are highly distinctive and famous throughout the world as they have been continuously and extensively used since 2004 in connection with the Complainant’s social network, having thereby rapidly acquired considerable goodwill and renown worldwide. Given this, the Complainant continues, the Respondent could not credibly argue that it did not have prior knowledge of the Trade Marks at the time of registration of the Domain Names in 2017 and 2018, by which time the Complainant’s social network had already amassed some 2 billion users. In addition, the Complainant submits, the Respondent’s knowledge of the Complainant and its rights in the Trade Marks may be readily inferred from the contents of the websites to which the Domain Names With respect to use in bad faith, the Complainant notes that the Domain Names redirect to third-party websites that have no affiliation with the Complainant and submits that Internet users are likely to mistakenly believe that the Domain Names are owned or otherwise affiliated with the Complainant. Furthermore, the Complainant asserts that it is more likely than not that the Respondent receives commercial gain resulting from the redirection of Internet users to the websites to which the Domain Names resolve. Therefore, the Complainant concludes, by using the Domain Names in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users the websites to which the Domain Names redirect, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of such websites and the goods and services offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. According to the Complainant, the Respondent’s failure to reply to the Complainant’s cease-and-desist letter of April 12, 2021 is further evidence of the Respondent’s bad faith. B. Respondent By email of July 24, 2021, the Respondent has submitted the following informal response: “Dear Sir/Madam, I have read through your correspondence. Unfortunately, I was not able to read your first mail (the cease and desist order) until recently, in the attached documents, after I received the last mail as the cease and desist order mail has still not gotten to me. Hence my lack of reply until now. I want to mention categorically that I was not aware of any caveat on the domain names or potential infringements prior to registering the domains as indicated in your correspondence. The said domain names were registered without any malicious motive hence every inconvenience due to this is hereby regretted. Having gone through your mails and corresponding documents, I do write to inform you of my consent to your request to delete the domain names or have them transferred to your possession by the registrar. To this end, I am authorizing the registrar to expedite action on this matter. Attached to this mail are the signed documents authorizing the registrar on the action to take. Warmest regards, Efukikata Efet.” Also on July 24, 2021, the Respondent sent a Standard Settlement Form, as used by the Center, which states that the Parties have reached an agreement regarding the Domain Names, in that the Parties request the Registrar to transfer the Domain Names from the Respondent’s control to the Complainant. The Standard Settlement Form only contained the signature of the Respondent. 6. Discussion and Findings A. Settlement Paragraph 17 of the Rules makes clear that a proceeding may be suspended to facilitate settlement negotiations, or to implement a settlement agreement between the parties. Before appointment of the Panel, the Complainant (or both parties jointly) may for that purpose submit a suspension request to the Center, and the proceedings will then typically be suspended for 30 days to allow the parties to explore settlement options (see section 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). When notifying the parties of the suspension, the Center will provide the parties with a Standard Settlement Form to facilitate the implementation of any agreed transfer (and not to record any settlement particulars). If the parties agree to settle their dispute, they should return the completed Standard Settlement Form to the Center. In this case, the Respondent has unilaterally submitted a Standard Settlement Form, signed by it. However, the Complainant did not request that the proceedings be suspended in order to enable a settlement to be negotiated. The case file did not contain such a request, nor did it hold a Standard Settlement Form signed by both Parties. Therefore, the case has to be decided on the merits. B. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates FACEBOOK, of which the Trade Marks consist, in its entirety. The addition of the descriptive terms “help center”, “learn” and “basics”,“recover” and “password” in the Domain Names turns the Domain Names into wording or short sentences where the FACEBOOK trade mark is clearly recognizable, and does not avoid a finding of confusing similarity between the Domain Names and the Trade Marks (WIPO Overview 3.0, section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier,WIPO Case No. D2018-0980). The gTLDs “.com” and “.org” are typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainant has rights. C. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Names. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Names, is not commonly known by the Domain Names and has not acquired trade mark rights in the Domain Names. In addition, the Respondent’s use of the Domain Names does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, since the Domain Names redirect to other websites using the Trade Marks, which offer, or contain sponsored links to third party websites offering, inter alia, paid products or services. In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names. D. Registered and Used in Bad Faith Based on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks, since: - the Respondent’s oldest registration of the Domain Names occurred some 11 years after the registration of the earliest of the Trade Marks; - the Trade Marks have a worldwide reputation, as evidenced, inter alia, by the worldwide presence of the services provided under the Trade Marks, the number of worldwide users of these services (in 2017 around 2 billion active users), and the worldwide registration of the Trade Marks; - a simple trade mark register search, or even an Internet search, prior to registration of the Domain Names would have informed the Respondent of the existence of the Trade Marks. Since the Respondent has no authorization from or other affiliation with the Complainant and was or should have been aware of the Complainant’s rights at the time of registration, the Domain Names were registered in bad faith. With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Names: - the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks; Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith. 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 Wolter Wefers Bettink
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- the use of the FACEBOOK trade mark on two of the three websites to which the Domain Names redirect;
- the lack of a formal Response of the Respondent;
- the use of the Domain Names for websites offering, or containing sponsored links to third party websites offering, inter alia, paid products or services, indicating that by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of its websites and the products sold on that websites;
- the registration by the Respondent, apart from the Domain Names, of multiple domain names containing the FACEBOOK trade mark, evidencing that the Respondent has engaged in a pattern of abusive domain name registration targeting the Trade Marks.
Sole Panelist
Date: September 8, 2021
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