The Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is muhammad aldino, Indonesia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 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 29, 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 December 1, 2021.
On November 29, 2021, the Center transmitted an email in English and Indonesian to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 1, 2021. 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 of the Complaint, and the proceedings commenced on December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 2, 2022. 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 was founded in 2004 and today is one of the leading providers of online social networking services counting with more than one billion daily active accounts and over two billion monthly active users from all over the world and having its
The Complainant is the owner, amongst several others, of the United States trademark registration No. 3,122,052 for FACEBOOK registered on July 25, 2006 (Annex 10 to the Amended Complaint).
The disputed domain name
The Complainant asserts to operate the world-famous FACEBOOK social networking website and mobile application, owning the exclusive rights over the trademark FACEBOOK throughout the world.
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s world-famous trademark, creating a likelihood of confusion, given that the disputed domain name reproduces exactly the Complainant’s FACEBOOK trademark together with the term “security”, which does not prevent a finding of confusing similarity thereof.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
(i) it has not licensed nor authorized the Respondent to use the Complainant’s FACEBOOK trademark, nor does the Respondent has any legal relationship with the Complainant that would entitle the Respondent to use the FACEBOOK trademark;
(ii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that the Respondent is passively holding the disputed domain name; and
(iii) the Respondent, identified by the Registrar in its verification process as “muhammad aldino”, is not commonly known by the disputed domain name.
As to the registration of the disputed domain name in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain name because the FACEBOOK trademark is so obviously connected with the Complainant.
The Complainant further submits that the disputed domain name is confusingly similar to the domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
Before turning to these issues, however, the Panel needs to address the question of the language of the proceedings.
A. Language of ProceedingsIn accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Considering the circumstances of this case and the fact that the Respondent did not formally reply to any of the communications sent by the Center, both in English and in Indonesian, this Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding, especially in view of the choice of the disputed domain name that incorporates terms in the English language. The proceeding would be unduly delayed if the Complaint had to be translated into Indonesian. Accordingly, the Panel accepts the Complainant’s request for English to be the language of this proceeding.
B. Identical or Confusingly SimilarThe Complainant has established rights in the FACEBOOK trademark duly registered in several countries around the world.
The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety. The addition of the term “security” does not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and there is no connection or affiliation between the Complainant and the Respondent. Also, the Complainant indeed states it has not licensed nor authorized the Respondent to use the Complainant’s FACEBOOK trademark, nor does the Respondent has any legal relationship with the Complainant that would entitle the Respondent to use the FACEBOOK trademark.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or from a webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
In view of these circumstances, the inactive use of the disputed domain name cannot be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
D. Registered and Used in Bad FaithThis case presents the following circumstances which indicate bad faith registration and use of the disputed domain name:
a) the Complainant’s trademark is registered worldwide and is well known;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain name;
c) the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark plus the term “security”), and the implausibility of any good faith use to which the disputed domain name may be put; and
d) the Respondent gave a false physical address to which the Center’s Written Notice could not be delivered.
Further, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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,
Wilson Pinheiro Jabur
Sole Panelist
Date: February 16, 2022