The Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Tucker Ellis LLP, United States.
The Respondent is Contact Privacy Inc. Customer 1249076168, Canada / Darin Cessario, 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 December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 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 December 20, 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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2022.
The Center appointed Michelle Brownlee as the sole panelist in this matter on January 26, 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 operates the Facebook social networking platform. The Complainant1 owns the following United States trademark registrations for the FACEBOOK trademark:
- Registration Number 3,122,052, registered on July 25, 2006, for “providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking” in International Class 38.
- Registration Number 3,881,770, registered on November 23, 2010, for “Advertising and information distribution services, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; providing on-line computer databases and on-line searchable databases in the field of classifieds” in International Class 35; “Providing online chat rooms and electronic bulletin boards for registered users for transmission of messages concerning collegiate life, general interest, classifieds, virtual community, social networking, photo sharing, and transmission of photographic images; provision of on-line forums for the transmission of photographic images; provision of on-line forums for communications on topics of general interest” in International Class 38; “Providing on-line computer databases and on-line searchable databases in the field of collegiate life concerning college athletics, concerts, entertainment events, art, performing arts, music, dance and academics; providing on-line computer databases and on-line searchable databases featuring collegiate student groups concerning subjects in the fields of academics and entertainment” in International Class 41; “Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; and computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; computer services, namely, creating an on-line community for registered users to participate in discussion, get feedback from their peers, form virtual communities, and engage in social networking; peer-to-browser photo sharing services, namely, providing a website featuring technology enabling users to upload, view and download digital photos” in International Class 42; and “Internet based introduction and social networking services; providing on-line computer databases and on-line searchable databases in the field of social networking” in International Class 45.
- Registration Number 4,441,540, registered on November 26, 2013, for “Financial transaction processing services, namely, clearing and reconciling financial transactions via computer and communication networks; Electronic funds transfer services” in International Class 36.
The Domain Name was registered on January 9, 2021, and does not resolve to any active web site.
5. Parties’ Contentions A. ComplainantThe Complainant states that it has been offering its world-famous online social networking services in connection with the FACEBOOK trademark since 2004. The Complainant states that it has more than one billion daily active accounts and over two billion monthly active users from all over the world. The Complainant states that its site is the seventh most visited web site in the world according to the Alexa information company, and states that its mobile app is consistently ranked as one of the top apps in the market.
The Complainant states that it offers several security features as part of its products, such as login alerts and two-factor authentication. The Complainant also owns the domain name
The Complainant contends that its many years of exclusive use of the FACEBOOK trademark combined with extensive use and promotion of its mark have resulted in worldwide fame of the mark. The Complainant presented evidence that its brand was the world’s 15th most valuable brand in Interbrand’s 2021 Best Global Brands ranking.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns rights in the FACEBOOK trademark. The addition of the word “security” in the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Complainant has put forward a prima facie case and no evidence has been presented that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. The Complainant has alleged that the Respondent is passively holding the Domain Name and presented evidence that shows that typing the URL “www.facebooksecurity.org” into a browser returned a message that the site associated with the URL can’t be reached. The Respondent has not refuted these allegations and evidence. Under the circumstances, there is no basis to find that the Respondent has demonstrated rights to or legitimate interests in the Domain Name. See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant’s rights in its FACEBOOK trademark predate the registration of the Domain Name by at least 16 years, and the Complainant has presented evidence regarding the worldwide fame of its mark. The Complainant also owns the domain name
The question of bad faith use of the Domain Name is more difficult because the evidence presented by the Complainant regarding the use of the Domain Name does not fall into any of the circumstances enumerated in paragraph 4(b) of the Policy. The Domain Name is being held passively without any content posted on a web site associated with it. WIPO Overview 3.0, section 3.3 states: “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.” In this case, the totality of the circumstances suggests that the Domain Name is being used in bad faith. Considering the distinctiveness and well-known nature of the Complainant’s FACEBOOK trademark, it is difficult to imagine a good faith use for the Domain Name by anyone other than the Complainant, and the Respondent has not offered any arguments or provided any evidence to support a finding of actual or contemplated good faith use. The Respondent also concealed his identity using a privacy service.
Accordingly, the Panel finds that the Complainant has met its burden of demonstrating bad faith registration and use in this case.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Michelle Brownlee
Sole Panelist
Date: February 8, 2022
1 On October 28, 2021, the Complainant, formerly known as “Facebook, Inc.”, changed its name to “Meta Platforms, Inc.”. The Complainant has provided evidence to show its change of the company name.