The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Wang Ming, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019. On the same day, the Center transmitted by email to the registrar named in the Complaint a request for registrar verification in connection with the disputed domain name. On the same day, that registrar advised that the disputed domain name had been transferred out of its system on September 12, 2019. On September 13, 2019, the Center transmitted by email to the Registrar named above a request for registrar verification in connection with the disputed domain name. On September 16, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name. On September 20, 2019, the Center sent an email communication requesting the Complainant to amend the Complaint to reflect the current Registrar of the disputed domain name. The Complainant filed an amended Complaint on the same day. The Center verified that the Complaint and 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 September 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2019. The Center appointed Matthew Kennedy as the sole panelist in this matter on October 23, 2019. 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 Background The Complainant provides online social networking services. Its main website at “www.facebook.com” currently has over 2.32 billion monthly active users. The Complainant holds multiple registrations for the trademark FACEBOOK, including United States trademark registration number 3,041,791, registered on January 10, 2006 with a claim of first use in commerce in 2004, specifying services in international class 38; and Chinese trademark registration number 5251162, registered on September 21, 2009, specifying services in class 38. Both those trademark registrations remain current. The Complainant has also registered multiple domain names consisting of “facebook” and a generic Top-Level Domain (“gTLD”) suffix or a country code Top-Level Domain (“ccTLD”) suffix or a Secondary Level Domain (“2LD”) suffix comprising “.com” and a ccTLD suffix. The Respondent is an individual resident in Zhuhai, Guangdong Province, China. According to the results of a reverse WhoIs database search submitted by the Complainant, the Respondent’s contact email address is associated with various domain names that incorporate third party trademarks, including The disputed domain name was registered on September 4, 2016. It formerly resolved to a website in Chinese promoting lotteries and displaying hyperlinks to slot game websites. At the request of the Complainant, the former registrar placed the disputed domain name on hold on July 10, 2019. The disputed domain name no longer resolves to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is identical to the Complainant’s FACEBOOK trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorised or allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. The disputed domain name was registered and is being used in bad faith. The fact that Facebook is currently blocked in mainland China is of little consequence in relation to the Respondent’s presumed knowledge of the Complainant and its trademarks, noting the widespread media coverage of the Complainant in China. The Complainant therefore submits that the Respondent had actual and constructive knowledge of the Complainant and its rights at the time of registration of the disputed domain name and thus registered the disputed domain name in bad faith. The Respondent was using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website, as set out in paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the FACEBOOK mark. The disputed domain name wholly incorporates the FACEBOOK mark as its only element, besides “.com” and the ccTLD extension of Saint Lucia “.lc”. Such a suffix may be disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here. See Confédération Nationale du Crédit Mutuel and Crédit Industriel et Commercial S.A. v. Trabaja Jayam, Zeb Fi Tarmatek,WIPO Case No. DLC2009-0002. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] 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, even if [the respondent has] acquired no 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. As regards the first circumstance set out above, the disputed domain name, which is identical or confusingly similar to the Complainant’s FACEBOOK mark, formerly resolved to a website promoting gambling services and linking to gambling websites. The Complainant submits that the Respondent is not a licensee of the Complainant, nor has he been otherwise authorised or allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The disputed domain name is now only passively held. Neither use of the disputed domain name is or was in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Wang Ming”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain name formerly resolved to a website promoting gambling services and linking to gambling websites. The disputed domain name is now only passively held. Neither is a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain name was registered in 2016, years after the registration of the Complainant’s FACEBOOK trademark, including in China where the Respondent is located. FACEBOOK is a coined term with no other meaning besides its trademark meaning. The disputed domain name wholly incorporates the FACEBOOK trademark with no additional element besides a 2LD suffix. Evidence submitted by the Complainant shows that its main website is the top result of a search for “facebook” in the Baidu search engine and that website is accessible in mainland China, where the Respondent is located, via virtual private networks. This all gives the Panel reason to infer that the Respondent was aware of the Complainant and its trademark at the time that he registered the disputed domain name. That inference is confirmed by the fact that the Respondent’s contact email address is associated with other domain names that, like the disputed domain name, consist of a third party trademark and a TLD or 2LD suffix. Therefore, the Panel finds that the Respondent deliberately chose to register the Complainant’s FACEBOOK trademark in the disputed domain name in bad faith. With respect to use, the Complainant has provided evidence that the Respondent formerly used the disputed domain name, which is identical or confusingly similar to the Complainant’s FACEBOOK trademark, in connection with a website that promoted gambling services and linked to gambling websites. That use was either for the commercial gain of the Respondent or the operator of the promoted and linked websites, or both. In each scenario, the use was for commercial gain. Nothing in the website content indicates any reason to use the disputed domain name other than to confuse consumers into believing that it had some connection to the Complainant. The Panel finds that the Respondent was using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the website has changed and that it is now passively held after the intervention of the former registrar. Passive use does not preclude a finding of bad faith: see Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In this dispute, the current passive holding of the disputed domain name does not alter the Panel’s conclusion due to the indicia of bad faith set out in the previous paragraph. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. Decision For 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 Matthew Kennedy
Sole Panelist
Date: October 31, 2019
Full & Egal Universal Law Academy