The Complainant is Facebook Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 朱思飞 (zhu si fei), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, 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.
On August 5, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 5, 2021, the Complainant confirmed its request that English 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 proceedings commenced on August 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 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 BackgroundThe Complainant is a provider of online social networking services. Its main website at “www.facebook.com” was launched in 2004. According to evidence provided by the Complainant, the Complainant’s website now ranks as the 7th most visited website in the world. The Complainant owns multiple trademark registrations in multiple jurisdictions, including Chinese trademark registration number 5251162 for FACEBOOK, registered on September 21, 2009, and specifying services in class 38. That trademark registration remains current. The Complainant has also registered multiple domain names incorporating the operative element “facebook”. On August 10, 2020, various online media outlets reported the Complainant’s announcement of the establishment of a new “Facebook Financial” group to oversee its various payment initiatives and financial services.
The Respondent is an individual resident in China. According to evidence provided by the Complainant, the Respondent has registered other domain names besides the disputed domain name, including
The disputed domain name was registered on August 10, 2020. It resolves to a webpage in Chinese offering it for sale and displaying the Respondent’s contact details. The webpage also includes the words “the domain is for sale!” in English. According to evidence provided by the Complainant, the Respondent also offers the disputed domain name for sale on a Chinese domain name marketplace website at the price of CNY 400.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s FACEBOOK mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks. The disputed domain name resolves to a website offering it for sale. The Respondent cannot credibly claim that he is commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. He uses the disputed domain name to offer it for sale and capitalize upon the Complainant’s reputation and goodwill, which clearly constitutes bad faith. He has engaged in a pattern of conduct by registering domain names targeting well-known third party trademarks for the purpose of preventing trademark owners from reflecting their trademarks in corresponding domain names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name resolves to a website partially in English, which suggests that the Respondent is capable of understanding that language, and translation of the Complaint would create additional expenses for the Complainant and unnecessary delay.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent the Parties the email communications in Chinese and English regarding the language of the proceeding, and written notification in Chinese and English of the Complaint, the Respondent has not commented on the language of the proceeding or expressed any interest in participating otherwise. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2. Substantive IssuesParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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.
A. Identical or Confusingly SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the FACEBOOK mark.
The disputed domain name wholly incorporates the FACEBOOK mark as its initial element. It also includes the word “financial”. Given that the mark remains clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this word avoids a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The disputed domain name also includes a generic Top-Level Domain (“gTLD”) “.net”. As a mere technical requirement of domain name registration, a gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purpose of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no 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.
As regards the first and third circumstances set out above, the disputed domain name resolves to a webpage where it is merely offered for sale. The Complainant submits that the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks. The Panel does not consider that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance, the Respondent is identified in the Registrar’s WhoIs database as “朱思飞 (zhu si fei)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the 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 respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;”
As regards registration, the disputed domain name was registered in 2020, years after the registration of the Complainant’s FACEBOOK trademark, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the FACEBOOK trademark, to which it adds the word “financial”. “Facebook” is a coined word with no apparent meaning other than as a trademark. The Respondent registered the disputed domain name with the operative element “facebookfinancial” on the same day it was announced that the Complainant was establishing a new “Facebook Financial” group. The Panel does not consider this to be a coincidence. Moreover, the evidence provided by the Complainant shows that the Respondent has registered other domain names incorporating the trademarks of third parties (notably, Alibaba, Allianz, FIFA and Tesla). The registration of the disputed domain name forms part of that pattern of conduct. Accordingly, the Panel finds that the Respondent knew of the Complainant at the time at which he registered the disputed domain name and targeted its FACEBOOK trademark.
As regards use, the Respondent uses the disputed domain name merely to offer it for sale. According to the evidence provided by the Complainant, the Respondent is offering the disputed domain name at the price of CNY 400 at another location on the Internet. The Panel considers it likely that this price is in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent has not documented any such costs greater than that amount. Accordingly, the Panel considers it likely that these circumstances fall within the terms of paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 name
Matthew Kennedy
Sole Panelist
Date: October 5, 2021