The Complainant is Facebook, Inc., United States of America (United States), represented by Tucker Ellis LLP, United States.
The Respondent is kadir eren, software, Turkey.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 11, 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 October 14, 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 October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 30, 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 leading provider of online social networking services, operating since 2004 a social media platform available online, through its main website “www.facebook.com” and through a mobile application (or “app”). The Complainant’s platform enables its users to create their own personal profiles and connect with each other on their personal computers and mobile devices, being available worldwide in more than 70 languages. Per the Complaint, the Complainant’s platform has more than one billion daily active accounts and over two billion monthly active users from all over the world. The Complainant’s website “www.facebook.com” and mobile platform are ranked as one of the most visited websites and downloaded apps in the world.
The Complainant owns trademark registrations for its FACEBOOK trademark in many jurisdictions around the world, including:
- United States Trademark Registration No. 3,122,052, FACEBOOK, word, registered on July 25, 2006, in Class 38;
- United States Trademark Registration No. 3,881,770, FACEBOOK, word, registered on November 23, 2010, in Classes 35, 38, 41, 42 and 45;
- United States Trademark Registration No. 4,441,540, FACEBOOK, word, registered on November 26, 2013, in Class 36;
- European Union Trade Mark No. 009151192, FACEBOOK, word, registered on December 17, 2010, in Classes 9, 35, 36, 38, 41, 42 and 45; and
- European Union Trade Mark No. 009776618, FACEBOOK, word, registered on November 2, 2011, in Classes 9, 16, 35 and 36, (collectively the “FACEBOOK mark”).
Prior decisions under the Policy have recognized the worldwide renown of the trademark FACEBOOK.2
The Complainant further owns numerous domain names comprising its FACEBOOK mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its services. Among others,
The disputed domain name was registered on October 19, 2020 and it is inactive resolving to an Internet browser error message.
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
Due to the Complainant’s promotional efforts and extensive use, the FACEBOOK mark is well known worldwide, being ranked 13th in Interbrand’s current Best Global Brands report.
The disputed domain name comprises the FACEBOOK mark in its entirety, adding the terms “verified” and “badge” which do not avoid a finding of confusing similarity, as these words are descriptive of and relevant to the Complainant’s services. The Complainant offers verified badges for the profiles contained in its platform, displaying an icon next to the verified profiles, which informs the public about the authenticity of certain profiles. The addition of a gTLD has no distinguishing value in the Policy.
The Respondent has no rights or legitimate interest in the disputed domain name. There is no legal relationship between the Parties. The Complainant has not licensed or authorized the use of its trademark to the Respondent. According to the Registrar verification, the Respondent is not commonly known by the disputed domain name, and the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is inactive. Given the fame of the FACEBOOK mark and the Respondent’s lack of authorization to use this trademark, it is difficult to imagine any circumstance under which the Respondent’s use of the disputed domain name could plausibly be in good faith under the Policy.
The disputed domain name was registered and is being used in bad faith. Due to the well-known character of the FACEBOOK mark, the Respondent likely knew about this trademark when it registered the disputed domain name. The Respondent’s knowledge of the Complainant’s trademark at the time of registering the disputed domain name, its lack of relationship with the Complainant or authorization to use this trademark, and the passive holding of the disputed domain name support a finding of bad faith under the Policy.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant indisputably has rights in the FACEBOOK mark, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.
The disputed domain name incorporates the FACEBOOK mark in its entirety, adding the terms “verified” and “badge” which do not avoid the perception of the mark. The Complainant’s trademark is recognizable in the disputed domain name and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate InterestsAlthough the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the FACEBOOK mark in its entirety, adding the terms (“verified” and “badge”) that refer to the Complainant’s platform and, particularly, to its platform’s verification services, denoting a risk of implied affiliation and confusion.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in respect of the disputed domain name, not being authorized to use the FACEBOOK mark and not existing any evidence that suggests that the Respondent may be commonly known by the disputed domain name. In this respect, the Panel notes that the Respondent’s name provided in the registration of the disputed domain name was originally concealed under a privacy service, and has no resemblance with the disputed domain name.
The Panel has corroborated that, according to the evidence provided by the Complainant, at the time of drafting this decision, the disputed domain name is inactive resolving to an Internet browser error message.
The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has further corroborated, through the Internet web archive WayBackMachine, that no website is archived in connection with the disputed domain name.
Therefore, no evidence in this case indicates that the disputed domain name has been used or that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or to a legitimate noncommercial or fair use. The Panel finds that the passive holding cannot amount to any legitimate noncommercial or fair use of the disputed domain name.
It is further remarkable that the Respondent has chosen not to reply to the Complaint, not providing any information or evidence in connection to any rights or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives any reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the continuous and extensive use of the FACEBOOK mark and its presence over the Internet since its launch in 2004, as well as the well-known character of this trademark worldwide recognized by previous decisions under the Policy.3
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s trademark in its entirety adding the terms that may refer to the Complainant’s platform services, which enhances the intrinsic likelihood of confusion and affiliation;
(ii) the Complainant’s trademark is well known worldwide and the Complainant operates online, being its social media platform available in over 70 languages;
(iii) according to the evidence provided by the Complainant, the disputed domain name is inactive, and, as the Panel has corroborated, through the Internet web archive WayBackMachine, no website has been archived in connection with the disputed domain name;
(iv) the Respondent used a privacy service to register the disputed domain name; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
It is further to be noted that the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used targeting the FACEBOOK mark, in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant and its trademark. The Panel further finds that the disputed domain name is capable of being used in any type of phishing, online scam, or other fraudulent schemes targeting the Complainant’s users.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is 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 name
Reyes Campello Estebaranz
Sole Panelist
Date: December 13, 2021
1 The disputed domain name was originally registered through a privacy service.
2 See Facebook, Inc. v. Andre Schneider / DomCollect AG,WIPO Case No. D2013-1183; Facebook Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433; Facebook, Inc. v. Andre Schneider / DomCollect AG,WIPO Case No. D2013-1183; Facebook, Inc. v. Naresh Bali,WIPO Case No. D2017-2510; Facebook, Inc. and Instagram, LLC v. Adam Szulewski,WIPO Case No. D2016-2380; Facebook Inc. v. Kristjan Eichler, WebExpress LLC / Arvuti LLC,WIPO Case No. D2015-2299; and Facebook, Inc. v. Prashant Chhibber,WIPO Case No. D2017-2477.
3 See footnote No. 2, supra.