The Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is oguz cinar, Australia.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 7, 2021, the Registrar transmitted by email to the Center its verification response providing additional contact details and the Complainant confirmed by email that no change will be made to the Complaint and its Annexes.
The Center verified that the 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 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent sent communications to the Center between December 9, 2021 and December 19, 2021 to which the Center acknowledged receipt. The formal Response was filed with the Center on December 19, 2021. The Respondent sent an additional communication to the Center on December 21, 2021 to which the Center acknowledged receipt.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 29, 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 (formerly known as “Facebook, Inc.”) changed its company name to “Meta Platforms, Inc.” on October 28, 2021. The Complainant is a leading provider of online social networking services, operating various social media platforms under the trademarks FACEBOOK, INSTAGRAM, and WHATSAPP.
Founded in 2004, the Facebook platform is a social media platform available online, through its main website “www.facebook.com” and through a mobile application (or “app”). This platform enables its users to create their own personal profiles and connect with each other on their personal computers and mobile devices, being available worldwide in more than 70 languages. The Facebook main website (“www.facebook.com”) and mobile app are ranked as one of the most visited websites and downloaded apps in the world.1
The Complainant owns trademark registrations for its FACEBOOK trademark in many jurisdictions around the world, including:
- United States Trademark Registration No. 3,041,791, FACEBOOK, word, registered on January 10, 2006, 2006, in Classes 35, and 38;
- Australian Trademark No. 1211165, FACEBOOK, word, registered on 19 November 2007, in Classes 9, 38, and 42;
- Australian Trademark No. 1088856, FACE, word, registered on 2 December 2005, in Classes 16, 25, 35, 38, 41, and 45; and
- European Union Trade Mark No. 003852779, FACE, word, registered on 3 October 2006, in Class 38, (collectively the “FACEBOOK mark” and the “FACE mark”).2
The Complainant further owns numerous domain names comprising its FACEBOOK mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including
Prior decisions under the Policy have recognized the worldwide renown of the trademark FACEBOOK.4
The Disputed Domain Names were registered within a period of less than two months (between January 25, 2021 and March 15, 2021), as follows:
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The Disputed Domain Names Nos. 1, 2, 4, and 7 redirect to a domain name resale website, in English language, namely “www.yourpublish.com”. This website offers for sale various domain names that incorporate well-known trademarks (including FACEBOOK, APPLE, GOOGLE, PAYPAL, TESLA, ALIBABA, and AMAZON), with the addition of terms related to digital currencies (such as “digital money”, “crypto bank”, or “coin bank”).
The Disputed Domain Names Nos. 3, 5, 6, 8, 11, 12, and 13 redirect to a website, in English language, dedicated to the promotion and studies of the Koran, namely “www.quranholybook.com”, which provides several links to online donations.
The Disputed Domain Names Nos. 9, and 10 are pointing to a GoDaddy parking page displaying Pay-Per-Click (“PPC”) links, as well as a link “Get This Domain” redirecting to a GoDaddy page, where, according to the evidence provided by the Complainant, these Disputed Domain Names are offered for sale at a price of USD 61. At the time of drafting this decision, these Disputed Domain Names are listed as “not available” in the said GoDadddy page.
The Disputed Domain Names No. 14, 15, and 16 are redirected to a Sedo page, where, according to the evidence provided by the Complainant, each of them is offered for sale at the price of USD 250. At the time of drafting this Decision, the price for each of these Disputed Domain Names in the said Sedo page, has increased to USD 282,575.
The Disputed Domain Names, except the Disputed Domain Name No. 16, are offered for sale at the website “www.yourpublish.com”, either at its homepage or at “www.yourpublish.com/facebook-digital-money”, where the website includes the FACEBOOK mark.
The Respondent apparently owns the domain names
Key contentions of the Complaint may be summarized as follows:
The Disputed Domain Names are confusingly similar to the Complainant's trademarks. The Disputed Domain Names Nos. 3, 5, 6, 8, 11, 12, 13, and 15 incorporate the FACEBOOK mark or the FACE mark in their entirety, adding the terms “cloud data”, “currency bank”, “data bank”, “digital money”, “money bank”, “pay app”, “pay wallet”, and “digi coin”, respectively. The Disputed Domain Names Nos. 14 and 16 incorporate the FACEBOOK mark interspersed with the dictionary terms “crypto” and “porn”, respectively. The Disputed Domain Names Nos. 1, 2, 4, 7, 9, and 10, contain the FACEBOOK mark interspersed with a hyphen (between the terms “face” and “book”), adding various dictionary terms, namely “bank”, “block chain”, “coin”, “data bank”, or “digital money”, respectively. In all cases, the Complainant’s trademarks are clearly recognizable within the Disputed Domain Names, and the gTLD “.com” is merely an irrelevant functional element.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has not been authorized to use the Complainant’s trademarks, is not commonly known by the Disputed Domain Names, has not secured or attempted to secure any trademark rights for the terms “facebook” or “face”, and is not using the Disputed Domain Names in connection with a fair use or a bona fide offering of goods or services. The Disputed Domain Names are used to redirect Internet users to the Respondent’s website “www.yourpublish.com” or to a third party platform (a Sedo page), where the Disputed Domain Names are listed for sale; or to a parking page displaying PPC links; or to the Respondent’s website “www.quranholybook.com” that contains various links for online donations. These circumstances cannot qualify as bona fide use under the Policy.
The Disputed Domain Names were registered and are being used in bad faith. The Complainant’s trademarks are well-known worldwide, including in Australia where the Respondent is based, and the term “facebook” is exclusively associated with the Complainant (all search results obtained for this term in Google refer to the Complainant). It is inconceivable for the Respondent to argue that he was not aware of the Complainant’s trademarks when acquiring the Disputed Domain Names in 2021. The Respondent’s website “www.yourpublish.com” (where the Disputed Domain Names, expect Disputed Domain Name No. 16, are offered for sale) includes references to the FACEBOOK mark and contains the term “facebook” in the URL, which corroborates the targeting and bad faith. The Respondent has registered the Disputed Domain Names primarily for selling them for valuable consideration in excess of their documented out-of-pocket registration costs. The Respondent is engaged in a bad faith pattern of conduct by registering not only the Disputed Domain Names but also other domain names targeting well-known third parties’ trademarks, preventing the legitimate trademark owners from reflecting their trademarks in corresponding domain names. The use of the Disputed Domain Names corroborates the Respondent’s intention to take unfair advantage of the Complainant’s reputation and goodwill, misleadingly diverting Internet users to unrelated websites for commercial gain, which constitutes bad faith under the Policy.
The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the Disputed Domain Names.
B. RespondentKey contentions of the Response may be summarized as follows:
The website “www.yourpublish.com” corresponds to a legitimate business and an Australian company subject to Australian Trademark Laws, where domain names are not automatically granted to trademark owners. There is not mutual jurisdiction referring to ICANN. Australian Trademark laws do not grant the Complainant with domain names, which are ruled by the “First in, First serve” basis.
The Disputed Domain Names are not confusingly similar to the Complainant’s trademarks. Different parties can use similar names in Australia with reference to dissimilar activities or business, such as crypto currency trading and social media. Different services cannot be confused. The Complainant’s social media platform had no digital currency at the time the Disputed Domain Names were bought, and it is not offering services related to crypto currency trading. Only a 50 per cent match cannot be confusing. Millions of domain names have a 50 per cent match. The terms “face” and “book” are very common words, which cannot be claimed by the Complainant as a trademark; the Complainant cannot claim that every domain name that contains these words, or every domain name that contains the word “face” resembles their social media platform.
The Disputed Domain Names are not used for cybersquatting or in bad faith. The Complainant cannot read the Respondent’s mind. Some Disputed Domain Names are waiting for investors, being offered in the Respondent’s platform (“www.yourpublish.com”) together with other services such as website design. Yourpublish.com is a business offering various services, such as web design, seeking partnership for projects, or purchase the right domain for right projects. The Disputed Domain Names were bought “legally for futuristic investment with a good faith doing Online trading, mostly Crypto currency”. The Respondent’s platform (“www.yourpublish.com”) has over 350 Domains, for some there has been designed a website, such as “www.quranholybook.com” or “www.bibleholybook.com”, both freely available without any fees, just donations.
The Complainant has purchased other domain names (i.e.,
The Respondent refuses to transfer the Disputed Domain Names through this proceeding.
In various emails addressed to the Center before the Response, the Respondent indicated that he was open for and willing to transfer the Disputed Domain Names to the Complainant for a reasonable price to settle the case, inviting the Complainant to make an offer for them.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant indisputably has rights in the FACEBOOK mark and the FACE mark, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.
The Disputed Domain Names nearly all incorporate the FACEBOOK mark or in one case (facedigicoin) the FACE mark (and therefore the leading part of the famous FACEBOOK mark) in their entirety, or the famous FACEBOOK mark interspersed with various terms (“crypto” and “porn”), or interspersed with a hyphen (between the terms “face” and “book”), further adding various terms related to crypto currency trading (“cloud data”, “currency bank”, “data bank”, “digital money”, “money bank”, “pay app”, “pay wallet”, “digi coin”, etc.). The Complainant’s trademarks are recognizable in the Disputed Domain Names and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11 of the WIPO Overview 3.0.
Accordingly, this Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate InterestsAlthough the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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 primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in a disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the Disputed Domain Names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The Disputed Domain Names incorporate the Complainant’s trademarks in their entirety or with minor alterations, separating the terms “face” and “book” by a hyphen or by terms mostly in the crypto currency sector, and adding various terms in this same sector. The Panel considers that these alterations do not avoid the implied affiliation (and risk of confusion) with the Complainant and its platform, giving the impression that the Disputed Domain Names may be referred to a new line of financial services provided by the Complainant or any business related company, and/or available in the Complainant’s social media platform.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the Disputed Domain Names, not being authorized to use the FACEBOOK mark, and there is no evidence that suggests that the Respondent is commonly known by the Disputed Domain Names. In this respect, the Panel notes that the Respondent’s name has no resemblance with the term “facebook” or to the Disputed Domain Names, and that the Respondent has not alleged and not provided any evidence of having applied for or registered (in Australia or in any other jurisdiction) any trademark containing these terms.
The Respondent indicates that the Complainant’s cofounder name bears also no resemblance with the Disputed Domain Names. The Panel wishes to clarify that the Complainant used the term “facebook” in its company name for many years,6 and this same term has been registered and extensively used as a trademark for identifying the Complainant’s social media platform, which justifies its prior legitimate rights as to its trademarks.
The Panel has further corroborated that, according to the Complainant’s allegations (not contested by the Respondent), the Disputed Domain Names are used to redirect Internet users to, either the Respondent’s website “www.yourpublish.com” or to a third party platform (a Sedo page), where the Disputed Domain Names are listed for sale, or to parking pages displaying PPC links, or to the Respondent’s website “www.quranholybook.com”, which displays links for online donations. The Panel finds that these circumstances cannot qualify as a bona fide use under the Policy, not amounting to any legitimate noncommercial or fair use of the Disputed Domain Names. Therefore, no evidence in this case indicates that the Disputed Domain Names have been used or the Respondent has made any preparations to use the Disputed Domain Names in connection with any bona fide offering of goods or services, or to any legitimate noncommercial or fair use.
The Panel notes that, as indicated by the Respondent, the Complainant’s trademarks are comprised of dictionary words, namely, the English terms “face” and “book”. Panels have recognized that registering a domain name comprised of a dictionary word or phrase may confer rights or legitimate interests on the respondent, when the domain name is genuinely used or demonstrably intended for use in connection with the its dictionary meaning and not to trade off third-party trademark rights. See section 2.10 of the WIPO Overview 3.0.
In the present case, the Panel notes that the dictionary meanings of the terms “face” and/or “book” (let alone in combined fashion) are unrelated as such to the use of the Disputed Domain Names. Therefore, on the Panel’s view, the Respondent may not have rights or legitimate interests in the Disputed Domain Names based on the dictionary meaning of the terms “face” and/or “book” included in the Disputed Domain Names.
It is further remarkable that the Respondent has repeatedly indicated in various emails addressed to the Center his willingness to transfer the Disputed Domain Names to the Complainant for a reasonable price. In this respect, the Panel notes that the price requested for several of the Disputed Domain Names (namely the Disputed Domain Names Nos. 14, 15, and 16, listed for sale in a Sedo Page) has apparently been significantly increased from USD 250 to USD 282,575, which clearly exceeds their out-of-pocket registration costs.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the Disputed Domain Names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the Disputed Domain Names have been registered and are being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the continuous extensive use of the FACEBOOK mark and presence over the Internet since its launch in 2004, as well as the well-known character of this trademark worldwide, as has been recognized by previous decisions under the Policy.7
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the Disputed Domain Names:
(i) the Disputed Domain Names incorporate the Complainant’s trademarks in their entirety or with minor alterations and adding terms which do not avoid the intrinsic likelihood of affiliation;
(ii) the Complainant’s trademarks are well-known worldwide and the Complainant operates online, being its social media platform available and extensively used worldwide, and particularly in Australia, where the Respondent is located;8
(iii) according to the evidence provided by the Complainant, the Disputed Domain Names are used to redirect Internet users to the Respondent’s websites or to a third party’s websites, where the Disputed Domain Names are offered for sale, or to parking pages displaying PPC links, or a website where links for online donations are displayed;
(iv) the price requested for some of the Disputed Domain Names (namely the Disputed Domain Names Nos. 14, 15, and 16, listed for sale in a Sedo Page) has apparently been significantly increased from USD 250 to USD 282,575, which clearly exceeds their out-of-pocket registration costs; and
(iv) the Respondent has not sufficiently alleged and proof any rights or legitimate interests in the Disputed Domain Names.
It is further to be noted that the number of the Disputed Domain Names (16), as well as the registration by the Respondent of other domain names including third parties’ well-known trademarks,9 indicates a pattern of bad faith, targeting the Complainant’s trademarks and its platform as well as other reputed trademarks, and preventing the Complainant and other legitimate owners of these well-known trademarks form reflecting their marks in corresponding domain names. See section 3.1.2, WIPO Overview 3.0.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the Disputed Domain Names were registered and are being used targeting the famous FACEBOOK mark, in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant and its trademarks. The circumstances of this case show that the Respondent’s purpose has been selling the Disputed Domain Names for a price exceeding their out-of-pocket registration costs, and misleadingly diverting Internet users to unrelated websites for commercial gain, preventing the Complainant from reflecting its trademarks in the corresponding domain names, which constitutes bad faith under the Policy.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Disputed Domain Names have been registered and are being used in bad faith.
D. Reverse Domain Name HijackingThe Respondent alleges that the Complaint was filed in bad faith, in an attempt to hijack the Disputed Domain Names and bulling his small company, causing business damage and disrespecting the Respondent’s rights.
However, the Panel finds that nothing in this case indicates that the Complaint was brought abusively; to the contrary, it is the domain name registrations that were. See section 4.16, WIPO Overview 3.0.
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,
Reyes Campello Estebaranz
Sole Panelist
Date: January 10, 2022
1 The website “www.facebook.com” is ranked as the seventh most visited website in the world and third in Australia (where the Respondent is based) according to information company Alexa. The Facebook app is ranked as the second most downloaded mobile application worldwide as per App Annie's Top Apps Ranking in 2021.
2 Some of the registration certificates for the Complainant’s trademarks and WhoIs records for the Complainant’s domain names are in the process of being updated, still including a reference to “Facebook, Inc.”. The Amended and Restated Certificate of Incorporation documenting the change of the Complainant's name, provided by the Complainant, evidences the company name change.
3 See footnote number 2, supra.
4 See Facebook, Inc. v. Andre Schneider / DomCollect AG,WIPO Case No. D2013-1183; Facebook Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433; Facebook, Inc. v. Andre Schneider / DomCollect AG,WIPO Case No. D2013-1183; Facebook, Inc. v. Naresh Bali,WIPO Case No. D2017-2510; Facebook, Inc. and Instagram, LLC v. Adam Szulewski,WIPO Case No. D2016-2380; Facebook Inc. v. Kristjan Eichler, WebExpress LLC / Arvuti LLC,WIPO Case No. D2015-2299; and Facebook, Inc. v. Prashant Chhibber,WIPO Case No. D2017-2477.
5 According to WhoIs records provided by the Complainant, the Respondent owns the domain names
6 The Complainant’s company name was Facebook, Inc., until its recent company name change in October 28, 2021.
7 See footnote number 4, supra.
8 See footnote number 1, supra.
9 See footnote number 5, supra.