The Complainant is Facebook, Inc., United States of America, represented by Tucker Ellis, LLP, United States of America.
The Respondent is Contact Privacy Inc. Customer 1245779249, Canada / Sarah Evans, Devhops Ltd, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 25, 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 30, 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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any formal response. Accordingly, the Center proceeded with the Panel Appointment on October 10, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on December 21, 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 operates the FACEBOOK social networking website and mobile application with more than one billion daily active accounts and over two billion monthly active users from all over the world. The
The Complainant owns numerous trademark registrations protecting the FACEBOOK mark in the United States of America (US), European Union (EU) and around the world.
- US trademark no. 3,122,052 FACEBOOK registered on July 25, 2006
- US trademark no. 3,881,770 FACEBOOK registered on November 23, 2010
- US trademark no. 4,441,540 FACEBOOK registered on November 26, 2013
- International trademark no. 1075094 FACEBOOK registered on July 16, 2010
- EU trademark no. 009151192 FACEBOOK registered on December 17, 2010
- EU trademark no. 009776618 FACEBOOK registered on November 2, 2011
The disputed domain name was registered on October 31, 2019, does not resolve to an active site and thus shows an error page.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain name identically reproduces its FACEBOOK mark in addition to the generic Top-Level-Domain (“gTLD”) and is therefore confusingly similar. The added term “securing” is descriptive and not capable of removing the confusing similarity. Therefore, Internet users would think that there is an affiliation between the disputed domain name and the FACEBOOK mark.
The Complainant furthermore alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant is the sole legitimate owner of trademarks, corporate names and domain names made of/including FACEBOOK. It has not licensed or authorized the Respondent’s use of the mark. The Respondent is solely passively holding the disputed domain name in an inactive state, which cannot establish a bona fide offering of goods or services. According to available WhoIs data it does not appear that the Respondent is known by the disputed domain name. An inactive website cannot be qualified as legitimate noncommercial or fair use of a domain name.
The Complainant contends that non-use of a domain name that is confusingly similar to a complainant’s mark constitutes use in bad faith. Additionally, a registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection to this owner suggests bad faith. This is especially the case with such well-known marks like FACEBOOK. Therefore, the Respondent’s failure to make an active use of the disputed domain name constitutes bad faith set out in paragraph 4(a)(iii) of the Policy.
B. RespondentWhile the Respondent had an exchange with the representatives of the Complainant regarding a possible settlement, no formal response in these proceedings was filed. The Respondent, aware of the deadlines, only drew attention to the time difference and used this as a pretext for not providing a reply to a possible settlement.
In the communication with the Complainant, the Respondent only commented on the matter to the extent that the disputed domain was registered in 2008 for educational purposes and that it will not be used for malicious purposes.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Panels have typically treated a respondent’s submission of a so-called “informal response” (merely making unsupported conclusory statements and/or failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” and demanding that it be dismissed) similar to a respondent’s default. It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The same is valid in case of “informal responses”. The Respondent’s assertion that it registered the disputed domain name in 2008, although not supported by any evidence, will still be considered.
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK mark, in which the Complainant has established rights through registration and use.
The disputed domain name incorporates the entirety of the Complainant’s mark FACEBOOK extended only by the preceding term “securing” as well as followed by the gTLD “.com”.
Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The term “securing” falls into the category of added other terms referred to in section 1.8 of the WIPO Overview 3.0.
Furthermore, gTLDs are generally disregarded when evaluating the identity or confusing similarity of a complainant’s mark to a disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD (see paragraph 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the Complainant, 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 often primarily within the knowledge or control of the Respondent. As such, where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, 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 name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent did not file a formal response, in particular the Respondent did not provide any information or evidence for demonstration of any rights or legitimate interest. The Respondent's assertion that the disputed domain was registered in 2008 for educational purposes cannot constitute a legitimate interest, since the available record on the one hand clearly shows that the disputed domain name was only registered in 2019. On the other hand, the Respondent did not provide any evidence showing any kind of relation of its registration to “educational purposes” of whatsoever nature. However, even if the assertion that the disputed domain name was registered for “educational purposes” was true, such use would not be legitimate as the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant (see section 2.5.1 of the WIPO Overview 3.0).
Based on the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimately interests in the disputed domain name which the Respondent has not sufficiently rebutted.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name does not resolve to an active website, the Respondent is passively holding the disputed domain name. Section 3.3 of the WIPO Overview 3.0 reads: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
According to the factors enumerated in this section, it is to be assessed whether passive holding in this case is to be classified as use and registration in bad faith.
The trademark FACEBOOK is one of the best-known marks in the world, as proven by the Complainant with supporting documents. The trademark FACEBOOK has a high reputation and distinctiveness. The Respondent did not provide any evidence or a formal response. The only substantive statement from Respondent on the matter (alleged registration in 2008 for educational purposes is not supported by any evidence. Noting the degree of distinctiveness and reputation of the Complainant’s mark, the failure of the Respondent to provide any evidence of actual or contemplated good-faith use of the disputed domain name, the Respondent’s use of a privacy service, and the implausibility of any good faith use to which the domain name may be put, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
As a result, in the overall view, the Panel considers that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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,
Christian Gassauer-Fleissner
Sole Panelist
Date: January 5, 2022