The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Allen Wilson, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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. 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 November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2019. Ten days after the deadline for responding, on December 12, 2019, the Respondent sent an email (but not a formal Response) to the Center, primarily raising the issue of what it perceived to be “an example of overreach and trying to silent [sic.] critical speech”. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. With this standard in mind, the Panel declines to consider the Respondent’s late-submitted, informal communications. Even if it were to consider such materials, the content therein would not change the outcome of this case. The Center appointed Evan D. Brown as the sole panelist in this matter on December 5, 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 used by over 2 billion people each month and owns a number of registrations for the FACEBOOK trademark, including United States Registration No. 3041791, registered on January 10, 2006 (alleging a date of first use in commerce in 2004). The Respondent registered the disputed domain name on January 8, 2010. It used the disputed domain name to redirect Internet users to an unrelated website with links for online donation. The Respondent initially engaged in communications with the Complainant’s legal counsel regarding the disputed domain name, but eventually stopped responding to such communications. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Apart from the untimely and informal communications the Respondent sent to the Center on December 12, 2019, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. FACEBOOK is a well-known trademark, being the mark used to identify one of the most popular social media platforms in the world. The Complainant owns trademark registrations for the FACEBOOK mark that predate the registration of the disputed domain name. The disputed domain name incorporates the trademark in its entirety. B. Rights or Legitimate Interests The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name for the following reasons. The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts, among other things, that: (1) The Respondent is not a licensee of the Complainant, nor has it been otherwise authorized or allowed by the Complainant to make any use of the FACEBOOK trademark, in a domain name or otherwise. (2) The Respondent cannot assert that it has been using the disputed domain name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name, which is identical to the Complainant’s well‑known trademark, was being used by the Respondent to redirect Internet users to an unrelated website with links for online donation. Such use of the disputed domain name does not constitute a bona fide offering of goods or services under the Policy. (3) The Respondent is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. (4) The Respondent cannot assert that it has made or is currently 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, pursuant to paragraph 4(c)(iii) of the Policy. Given the overwhelming renown and distinctiveness of the Complainant’s trademark worldwide, it would be inconceivable for the Respondent to justify its choice of the disputed domain name, which consists of the FACEBOOK trademark, to resolve to a website that is completely unrelated to the Complainant’s business and activities. (5) The nature of the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation. Because the Respondent failed to introduce evidence to rebut this prima facie showing, the Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The Complainant asserts the following facts in support of its argument that the Respondent registered the disputed domain name in bad faith: (1) the Complainant’s FACEBOOK trademark is highly distinctive and therefore the Respondent had actual and constructive knowledge of the Complainant and its rights at the time of registration of the disputed domain name in 2010; (2) the Respondent used a fake telephone number in the WhoIs contact details; and (3) given the Complainant’s worldwide fame since 2004, the Respondent simply could not have chosen the disputed domain name for any reason other than to capitalize on the Complainant’s goodwill and reputation. The Complainant asserts the following facts in support of its argument that the Respondent used the disputed domain name in bad faith: (1) the Respondent used the disputed domain name – which contains the Complainant’s famous trademark – to redirect traffic to the Respondent’s own website by creating confusion; (2) the Respondent used the disputed domain name to provide links to third party content, but took that content down when put on notice by the Complainant; and (3) the Respondent’s failure to reply to the Complainant’s clear and explicit cease and desist letter prior to the filing of the Complaint in this matter. The Panel finds that the Complainant has successfully established that the Respondent registered and used the disputed domain name in bad faith and has therefore prevailed on this element. 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 Evan D. Brown
Sole Panelist
Date: December 16, 2019
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