The Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is c/o WHOIStrustee.com Limited, Registrant of facebookloginsecurity.com, United Kingdom / Koltyn Wallar, Canada.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 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 December 16, 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 Respondent submitted a formal Response to the Center on December 20, 2021, which expressed his willingness to settle with the Complainant. On December 21, 2021, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension. On January 4, 2022 the Complainant confirmed that it did not wish to suspend the proceedings and requested the Center to proceed with the appointment of the Panel and rendering of a decision.
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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. The Respondent sent a further informal email to the Center on January 25, 2022, reiterating his willingness to transfer the disputed domain name to the Complainant. On January 26, 2022, the Complainant confirmed again that it would like the Panel to issue a decision. On January 27, 2022, the Center confirmed that it would proceed with panel appointment.
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, formerly known as Facebook, Inc., is a United States social technology company that operates Facebook, Instagram and WhatsApp. The Complainant’s Facebook platform was founded in 2004 and today is one of the leading providers of online social media and social networking services, being its
The Complainant is the owner, amongst several others, of the United States trademark registration No. 3041791 for FACEBOOK, registered on January 10, 2006 (Annex 7 to the Amended Complaint).
The disputed domain name
The Complainant asserts to be the world’s leading provider of online social media and social networking services, actively promoting and using the FACEBOOK trademark throughout the world.
Under the Complainant’s view, the Respondent has abusively registered the disputed domain name which has not been actively used since its creation.
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s trademark, creating a likelihood of confusion, given that the disputed domain name incorporates the Complainant’s FACEBOOK trademark together with the addition of the dictionary terms “login” and “security”, what 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:
(a) the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark;
(b) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, given that the disputed domain name is being passively held;
(c) the Respondent is not commonly known by the disputed domain name; and
(d) Given the passive holding of the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers in accordance with paragraph 4(c)(iii) of the Policy.
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 considering the nature of the disputed domain name and that in 2021 the Complainant had already reached a strong reputation worldwide. In addition to that, the Respondent’s use of a privacy registration service at the time of registration of the disputed domain name is another indication of the Respondent’s bad faith and his intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
The Complainant further submits that the Respondent is passively holding the disputed domain name what would not preclude a finding of bad faith given the overall circumstances of the case.
B. RespondentThe Respondent, in his formal Response of December 20, 2021, recognizes that he has no legitimate interests in the disputed domain name and states that he agrees with its transfer to the Complainant.
The Respondent explains that he registered the disputed domain name as an educational example of the process of a domain name registration to a colleague and further states that the email messages sent by the Complainant on March 8, 2021 and March 16, 2021 were delivered to his spam box, which he did not check until December 18, 2021 because he does not have the habit of checking the spam folder.
Lastly, the Respondent denies that he attempted to conceal his identity at the time of registering the disputed domain name to implement a phishing scheme in view of the fact that the personal information of Canadian citizens who register domain names is generally concealed by default in the WhoIs databases as per Canadian law.
In addition to that, the Respondent, on January 25, 2022, reaffirmed his express consent to the remedy requested by the Complainant.
While the Panel notes the Respondent’s email communications, the Panel will proceed to a substantive decision on the merits.
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 aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
A. 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 terms “login” and “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.
B. 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 Panel notes that given the Factual Background and Parties’ Contentions set out above, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has also been met.
C. 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; and
c) the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark plus the terms “login” and “security”), along with the Respondent’s willingness to transfer the disputed domain name, and the implausibility of any good faith use to which the disputed domain name may be put.
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. Moreover, the current non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding under the circumstances of this case. See WIPO Overview 3.0, section 3.3.
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