The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 苏洪文 (su hong wen), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English 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 11, 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 in English on October 15, 2021.
On October 11, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 11, 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 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 in English and Chinese of the Complaint, and the proceedings commenced on October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Sok Ling MOI as the sole panelist in this matter on November 18, 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, headquartered in California, United States, is the world’s leading provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and share information via its main website at “www.facebook.com”, which is ranked amongst the top most visited websites in the world.
Since 2017, the Complainant has been engaged in the development of blockchain technology, which culminated in a formal announcement of its planned development of a new cryptocurrency on June 18, 2019, under the name of “Libra”. In December 2020, “Libra” and the “Libra Association” (of which Facebook is a member organization) rebranded themselves as “Diem” and the “Diem Association” respectively. At present, the Diem payment network is still under development and no digital Diem currency is available for purchase by the public. The Libra Association’s main website at “www.libra.org” now redirects to the Diem Association’s main website at “www.diem.com” (the “official Diem website”) where it provides information about the Diem payment network.
The Complainant is the owner of numerous trade mark registrations worldwide (including in China where the Respondent is based), for its well-known FACEBOOK mark, including the following:
- United States Trade Mark No. 3041791, registered on January 10, 2006 (first use in commerce in 2004); and
- Chinese Trade Mark No. 5251162, registered on September 21, 2009.
The Complainant also owns numerous domain name registrations incorporating the FACEBOOK trade mark including
The disputed domain name
The Complainant claims that the disputed domain name is confusingly similar to its trade mark FACEBOOK.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish a website which appeared to be a replica of the official Diem website was not a bona fide use of the disputed domain name, but could instead be intended for the furtherance of a fraudulent scheme. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant claims that its trade mark FACEBOOK is highly distinctive and famous throughout the world. The Complainant contends that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights and has used the disputed domain name to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingPursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and
(b) according to the evidence submitted by the Complainant, the contents of the website to which the disputed domain name previously resolved were entirely in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent in both Chinese and English of the proceeding;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese, but none was filed.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
6.2 Substantive FindingsParagraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for a domain name to be cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in FACEBOOK by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s FACEBOOK trade mark in its entirety. The addition of the hyphen “-” and the word “libra” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark, as the Complainant’s trade mark is clearly recognizable within the disputed domain name. The addition of the generic Top-Level Domain (“gTLD”) “.net” is a standard registration requirement and is generally disregarded in the analysis under the first element.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in a domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the FACEBOOK trade mark or to seek registration of any domain name incorporating the Complainant’s trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “facebook” or “libra”.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which closely resembled the look and feel of the official Diem website, reproducing the logo for the Diem project of which the Complainant is a member. This suggests that the Respondent was using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant and its trade mark FACEBOOK enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the FACEBOOK trade mark and its extensive use by the Complainant. The Panel agrees with the Complainant’s assertion that although access to the Facebook website was blocked in China, there has been wide media coverage and publicity by international and China press. Thus a presumption arises that the Respondent was aware of the Complainant’s FACEBOOK trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
The use of the disputed domain name to publish a website which closely resembled the look and feel of the official Diem website, suggests an intention to create an affiliation with the Complainant where there is none, and this is indicative of bad faith.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent intends to take advantage of the fame of the Complainant’s trade mark to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Further, the current non-use of the disputed domain name in the circumstances of this case would not prevent a finding of bad faith under the doctrine of passive holding.
The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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
Sok Ling Moi
Sole Panelist
Date: December 26, 2021