The Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Thomas Novak, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 November 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 10, 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on December 10, 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 United States social technology company that operates Facebook, Instagram, and WhatsApp. Facebook, founded in 2004, is a leading provider of online social-media services. Facebook currently has approximately 1.91 billion monthly active users worldwide. Facebook’s social networking services are provided in more that 70 languages.
The Complainant’s trademark FACEBOOK (the Mark) is one of the most famous online trademarks in the world. The Complainant has secured ownership of numerous trademark registrations for FACEBOOK in many jurisdictions throughout the world, including United States Trademark Registration No. 3041791, registered on January 10, 2006.
The Complainant is also the owner of numerous domain names consisting of or including the Mark and registered utilizing various generic Top-Level Domains (“gTDLs”) and country code Top-Level Domains (“ccTLDs”).
In 2017, the Complainant began the development of a blockchain cryptocurrency. On June 18, 2019, the Complainant formally announced the planned cryptocurrency to be named “Libra”. In December 2020, the Libra project was re-branded as Diem cryptocurrency to be offered by the Diem Association, a membership organization founded by the Complainant and other companies.
The disputed domain name originally resolved to a website offering “libra” cryptocurrency for sale. The website closely resembled the Complainant’s official Diem website.
The disputed domain name was registered on November 8, 2020. The disputed domain name no longer resolves to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Mark. The disputed domain name is composed by the element “fbook, an abbreviation of the Complainant Mark, combined with by the original name, “libra”, of the Complainant’s planned and widely announced cryptocurrency. The Complainant further asserts the Respondent has no legitimate rights or interests in the Mark or the disputed domain name as there is no evidence of any legitimate business activity of the Respondent prior to registration and use of the disputed domain name. Further, the Complainant asserts that the Complainant has not authorized the use of the Mark by the Respondent. The Complainant also asserts the disputed domain name was registered and used in bad faith to implement an “advance fee” scheme to sell cryptocurrency to unsuspecting internet users believing that the disputed domain name resolves to a website sponsored or affiliated with the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel 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 was 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 Mark.
The disputed domain name is composed by combining the expressions “libra” and “fbook”. The term “fbook” is a shortened, abbreviated misspelling of the Complainant’s Mark. Prior UDRP panels have found that the expression “fbook” is confusingly similar to the Mark. See Facebook, Inc. v. Kim Changho,WIPO Case No. D2019-1432 (transferring
A domain name which incorporates a registered mark, or elements thereof, is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the addition of another term. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard,WIPO Case No. D2021-0609 (transferring
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759 (transferring
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, being composed of (i) the element “fbook” that is derived from the Mark and (ii) the term “libra” which was formerly the name of the Complainant’s planned cryptocurrency carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. Moreover, the Respondent’s use of the disputed domain name for fraudulent activity does not confer rights or legitimate interests. WIPO Overview 3.0, section 2.13.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(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 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 domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark 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 its website or other on-line 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’s planned offering of its blockchain cryptocurrency, originally called “Libra”, was widely announced. It is inconceivable that the Respondent when offering a cryptocurrency product would be unaware of the Complainant, the Mark, and the Complainant’s planned cryptocurrency offering. This conclusion is buttressed by the Respondent’s (i) choice of the term “libra” for its cryptocurrency product, which is the original name of the Complainant’s cryptocurrency offer and (ii) construction of its website that has the look and feel of the Complainant’s Diem website. Clearly, the Respondent has attempted to lure unsuspected Internet users to its website looking to investigate or ultimately purchase cryptocurrency offered by the Complainant. The construction of the disputed domain name, which lures unsuspecting Internet users to purchase “libra” cryptocurrency at the look-alike website, demonstrates bad faith registration and use.
Finally, the current “inactive” status of the Respondent’s website does not absolve the Respondent of bad faith registration and use. See WIPO Overview 3.0, section 3.3.
In the light of the above, the Panel finds that the Complainant has met its burden under 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
William F. Hamilton
Sole Panelist
Date: December 21, 2021