Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Ibsam Shahzad, United States.
2. The Domain Names and RegistrarThe Disputed Domain Names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on November 15, 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 Respondent of the Complaint, and the proceedings commenced on November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2021.
The Center appointed Richard W. Page as the sole panelist in this matter on December 15, 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 BackgroundComplainant is a United States social technology company and operates, Facebook, Instagram, and WhatsApp. Complainant’s focus is to bring the metaverse to life and help people connect, find communities, and grow businesses. The metaverse will feel like a hybrid of today’s online social experience, sometimes expanded into three dimensions, or projected into the physical world. It will let Internet users share immersive experience with other people, even when they cannot be together – and do things together they could not do in the physical world.
Founded in 2004, Complainant’s Facebook platform is a leading provider of online social-media and social-networking services. Facebook’s mission is to give people the power to build community and bring the world closer together. People use Facebook’s services to stay connected with friends and family, to discover what’s going on in the world, and to share and express what matters to them.
Access to Facebook was originally restricted to students at Harvard University, but quickly expanded to other universities and, in 2006, to anyone in the world with a valid email address. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with one million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010, one billion users worldwide by September 2012, and 2.27 billion users as of September 2018.
Today, Facebook has approximately 2.90 billion monthly active users and 1.91 billion daily active Internet users on average worldwide (as of June 30, 2021). Its main website “www.facebook.com” is currently ranked as the 4th most visited website in the world according to information company Alexa. With approximately 85 percent of its daily active users outside the United States and Canada. Facebook’s social-networking services are provided in more than 70 languages. In addition, Facebook is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market. The FACEBOOK Mark is currently one of the most famous online trademarks in the world. In 2021, the Facebook brand ranked 15th in Interbrand’s Best Global Brands report.
Given the exclusive online nature of Complainant’s social-networking business, Complainant’s domain names consisting of its FACEBOOK Mark are not only the heart of its entire business, but also the main way for millions of Internet users to avail themselves of its services. Reflecting its global reach, Complainant is the owner of numerous domain names consisting of or including its FACEBOOK Mark, registered under various generic Top-Level Domain (gTLDs), as well as under a number of country code Top-Level Domains (ccTLDs).
Complainant has also made substantial investments to develop a strong presence online by being active on various social-media platforms. For instance, Complainant’s official page on Facebook has over 49 million “likes”. In addition, Complainant has 13.6 million followers on Twitter.
In addition to its strong presence online, Complainant has secured ownership of numerous trademark registrations of the FACEBOOK Mark in many jurisdictions throughout the world, including but not limited to the following:
United States Trademark Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004);
European Union Trademark Registration No. 005722392, FACEBOOK, registered on April 29, 2008; and
International Trademark Registration No. 1232015, FACEBOOK, registered December 15, 2014.
The Disputed Domain Names were registered on May 18 and May 19, 2021, and resolve to the Registrar’s holding page stating that the respective Disputed Domain Name may be for sale.
On September 21, 2021, Complainant filled in the Registrar’s online form inviting Respondent to contact Complainant. No response was received.
5. Parties’ Contentions A. ComplainantComplainant contends that the Disputed Domain Names are confusingly similar to the FACEBOOK Mark, pursuant to paragraph 4(a)(i) of the Policy.
Complainant further contends that the Disputed Domain Names resolve to a parking page provided by the Registrar stating that “this domain may be for sale. We can verify that the domain is for sale over the phone, help you with the purchase process and answer any questions”. To the best of Complainant’s knowledge, the Disputed Domain Names have not otherwise been actively used since their registration.
Complainant further contends that the Disputed Domain Names incorporate the entirety of the FACEBOOK Mark with the addition of the descriptive terms “crpto” (without the letter “y”), “currency”, and “mining”. The FACEBOOK Mark is clearly recognizable as the leading element of the Disputed Domain Names. Complainant submits that the combination of the FACEBOOK Mark together with such descriptive terms does not prevent a finding of confusing similarity between the Disputed Domain Names and the FACEBOOK Mark. Complainant further contends that the addition of the “.com” generic Top-Level-Domain (“gTLD”) may be disregarded for purposes of assessing confusing similarity, as it is a standard requirement of registration.
Complainant submits that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Respondent is not a licensee of Complainant, nor has Respondent been otherwise authorized by Complainant to make any use of its FACEBOOK Mark, in a domain name or otherwise. Complainant has no prior business relationship with Respondent whatsoever.
Complainant further submits that the Disputed Domain Names currently point to webpages stating that they may be for sale. Such general offer to sell the Disputed Domain Names, which target Complainants distinctive and well-known FACEBOOK Mark, signal an intent to profit from the goodwill and reputation associated with the FACEBOOK Mark, and does not qualify as prior use in connection with a bona fide offering of good or services within the meaning of paragraph 4(c)(i) of the Policy. There is no evidence of Respondent having made any other substantive use of the Disputed Domain Names. Respondent cannot credibly claim to be commonly known by the Disputed Domain Names, or by a name corresponding to the Disputed Domain Names, within the meaning of paragraph 4(c)(ii) of the Policy. The identity of Respondent in the WhoIs records is masked and the Disputed Domain Names are not being used in the promotion of any business or any other online service that might give rise to Respondent being commonly known by the Disputed Domain Names. The identity of Respondent, as revealed by the Registrar, is Ibsam Shahzad, which bears no resemblance to the Disputed Domain Names whatsoever.
Complainant further submits that Respondent is not currently making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy. As described above, the Disputed Domain Names resolve to GoDaddy webpages stating that they may be for sale. Prior UDRP panels have found such use to not be a noncommercial or fair use of the Disputed Domain Names. See Arcelormittal (SA) v. 张佳 (Zhang Jia),
WIPO Case No. D2020-1042. There is no evidence Respondent has made any other substantive use of the Disputed Domain Names of a nature that would otherwise confer rights or legitimate interests on Respondent pursuant to paragraph 4(c)(iii) of the Policy.
Complainant alleges that Respondent has registered and used the Disputed Domain Names in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainant further alleges that Respondent has violated paragraphs 4(b)(i) and 4(b)(ii) as indicators of bad faith.
Complainant further alleges that its FACEBOOK Mark is highly distinctive and famous throughout the world. It has been continuously and extensively used since 2004 in connection with Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide. Complainant further alleges that it would be inconceivable for Respondent to argue that it did not have knowledge of the FACEBOOK Mark when it acquired the Disputed Domain Names in 2021, especially as Complainant had already amassed approximately 2.89 billion Internet users.
Complainant further alleges that the websites associated with the Disputed Domain Names include at the top that they may be for sale. Complainant infers from the contents of the webpages to which the Disputed Domain Names resolve that Respondent has registered the Disputed Domain Names primarily for the purpose of selling them to Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Names, in accordance with paragraph 4(b)(i) of the Policy.
Complainant adds that the “generalized offer” to sell a domain name under such circumstances was considered by prior panels to fall within the scope of paragraph 4(b)(i) of the Policy. General Electric Company v. John Bakhit,
WIPO Case No. D2000-0386.
Complainant asserts that by registering three Disputed Domain Names targeting the FACEBOOK Mark, Respondent has engaged in a bad faith pattern of abusive domain name registration preventing Complainant from reflecting its FACEBOOK Mark in corresponding Disputed Domain Names, in accordance with paragraph 4(b)(ii) of the Policy. The Disputed Domain Names resolve to webpages provided by the Registrar containing no content, but advertising that they may be for sale.
Complainant further asserts that Respondent has not been making any apparent substantive use of the Disputed Domain Names. Complainant submits that such non-use of the Disputed Domain Names is similar to passive holding, which would not prevent a finding of bad faith. Telstra Corporation Limited. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Complainant further asserts that the FACEBOOK Mark in well known internationally. As a result of its longstanding and widespread use, the FACEBOOK Mark has become exclusively associated with Complainant. Complainant further asserts that that when confronted with the combination of the FACEBOOK Mark together with terms (or an obvious misspelling of them) “crpto”, “currency”, and “mining” many Internet users would be confused and wrongly assume that the Disputed Domain Names are owned by or otherwise endorsed by Complainant.
Complainant further asserts that there is no evidence of Respondent’s actual or contemplated bona fide use of the Disputed Domain Names. Despite Complainant’s efforts to contact Respondent, Respondent has not come forward with any response or evidence of bona fide intent in relation to the Disputed Domain Names. To the best of Complainant’s knowledge, all Dispute Domain Names have been passively held by Respondent.
Complainant further asserts that, in light of the nature of the Disputed Domain Names themselves, i.e., the combination of the FACEBOOK Mark together with descriptive terms, the Disputed Domain Names carry with them a high risk of implied affiliation with Complainant. Simply put, Complainant cannot conceive of any bona fide use Respondent could make of the Disputed Domain Names that would not result in creating a misleading impression of association with Complainant.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to the FACEBOOK Mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and,
iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarSection 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the FACEBOOK Mark.
Complainant contends that it has numerous trademark registrations of the FACEBOOK Mark in many jurisdictions throughout the world, including but not limited to the following: United States Trademark Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004); European Union Trademark Registration No. 005722392, FACEBOOK, registered on April 29, 2008; and International Trademark Registration No. 1232015, FACEBOOK, registered December 15, 2014.
Respondent has not contested these contentions.
Therefore, the Panel finds that Complainant has enforceable rights in the FACEBOOK Mark for purposes of this proceeding.
The Disputed Domain Names incorporate the entirety of the FACEBOOK Mark with the addition of the terms “crpto” (without the letter “y”), “currency”, and “mining”. The FACEBOOK Mark is clearly recognizable as the leading element of the Disputed Domain Names.
Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also, Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also, section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as“.net” may be disregarded for purposes of assessing confusing similarity.
Based upon this record, the Panel finds the Disputed Domain Names are confusingly similar to the FACEBOOK Mark and that Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Names. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the FACEBOOK Mark.
The Disputed Domain Names currently point to webpages stating that they may be for sale. Such general offer to sell the Disputed Domain Names, which target Complainants distinctive and well-known FACEBOOK Mark, signal an intent to profit from the goodwill and reputation associated with the FACEBOOK Mark, and does not qualify as prior use in connection with a bona fide offering of good or services within the meaning of paragraph 4(c)(i) of the Policy. There is no evidence of Respondent having made any other substantive use of the Disputed Domain Names. Respondent cannot credibly claim to be commonly known by the Disputed Domain Names, or by a name corresponding to the Disputed Domain Names, within the meaning of paragraph 4(c)(ii) of the Policy. The identity of Respondent in the WhoIs records is masked and the Disputed Domain Names are not being used in the promotion of any business or any other online service that might give rise to Respondent being commonly known by the Disputed Domain Names. The identity of Respondent, as revealed by the Registrar, is Ibsam Shahzad, which bears no resemblance to the Disputed Domain Names whatsoever.
Further, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy. As described above, the Disputed Domain Names resolve to the Registrar’s holding page stating that they may be for sale. Prior UDRP panels have found such use to not be a noncommercial or fair use of the Disputed Domain Names. Seesection 3.1.1 of WIPO Overview 3.0. There is no evidence Respondent has made any other substantive use of the Disputed Domain Names of a nature that would otherwise confer rights or legitimate interests on Respondent pursuant to paragraph 4(c)(iii) of the Policy.
The Panel finds that Complainant has made a prima facie showing that Respondent lack rights or legitimate interests in the Disputed Domain Names under paragraph 4(c) of the Policy.
Moreover, the Panel finds that the construction of the Disputed Domain Names themselves is such to carry a risk of implied affiliation with Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Respondent has not contested Complainant’s contentions. Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registrations to Complainant who is the owner of FACEBOOK Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) you [Respondent] have registered the Disputed Domain Names in order to prevent the owner of the FACEBOOK Mark from reflecting the mark in corresponding domain names, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the FACEBOOK Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra, supra. In addition to the criteria of paragraph 4(b) of the Policy, other factors alone or in combination can support a finding of bad faith. One such factor is passive holding described in section 3.4 of WIPO Overview 3.0.
Complainant alleges that Respondent has violated paragraphs 4(b)(i) and 4(b)(ii) of the Policy and the additionally engaged in passive holding, as indicators of bad faith.
Complainant further alleges that its FACEBOOK Mark is highly distinctive and famous throughout the world. It has been continuously and extensively used since 2004 in connection with Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide. It would be inconceivable for Respondent to argue that it did not have knowledge of the FACEBOOK Mark when it acquired the Disputed Domain Names in 2021, especially as Complainant had already amassed approximately 2.89 billion Internet users.
The websites associated with the Disputed Domain Names include at the top that they may be for sale. It can be inferred therefrom that Respondent has registered the Disputed Domain Names primarily for the purpose of selling them, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Names, in accordance with paragraph 4(b)(i) of the Policy. Further, the “generalized offer” to sell a domain name under such circumstances was considered by prior panels to fall within the scope of paragraph 4(b)(i) of the Policy. General Electric Company v. John Bakhit,
WIPO Case No. D2000-0386.
By registering three domain names targeting the FACEBOOK Mark, Respondent has engaged in a bad faith pattern of abusive domain name registration preventing Complainant from reflecting its FACEBOOK Mark in corresponding domain names, in accordance with paragraph 4(b)(ii) of the Policy.
Lastly, the Disputed Domain Names resolve to webpages provided by the Registrar containing no content, but advertising that they may be for sale. Notwithstanding the offer for sale, the lack of any apparent substantive use of the Disputed Domain Names is similar to passive holding, which would not prevent a finding of bad faith. Telstra, supra.
Respondent has not contested Complainant’s assertions of bad faith.
Based on the available record, the Panel finds that Complainant has satisfied the factors of paragraphs 4(b)(i) and 4(b)(ii) of the Policy and the additional factor of passive holding. Therefore, Complainant has satisfied the elements 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 Names,
Richard W. Page
Sole Panelist
Date: December 20, 2021