WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Facebook, Inc. v. Majid Karimian Ghannad Case No. DIR2009-0001 1. The Parties
The Complainant is Facebook, Inc. of California, United States of America, represented by Lovells, France.
The Respondent is Majid Karimian Ghannad of Yazd, the Islamic Republic of Iran, represented by Dr. Mansoor Aminilari. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2009. On March 23, 2009, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 25, 2009, IRNIC 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 .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009. On April 14, 2009, the Center received two emails from the Respondent, which the Center acknowledged on the same day. On April 16, 2009, a further communication was received from the Respondent providing its preferred candidates for the Respondent-selected co-Panelist for the case. The Center acknowledged this communication on April 16, 2009, reminding the Respondent that if it wished to file any further response that it should do so within the day. An additional email was received from the Respondent on April 16, 2009.
The Center appointed Alistair Payne, David H. Bernstein and Dae-Hee Lee as panelists in this matter on June 30, 2009. The Panel finds that it was properly constituted. Each member of 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 Facebook, Inc. is the world's leading provider of online social networking services. The FACEBOOK web site operates under the FACEBOOK trade name and trade mark and the domain name. The FACEBOOK web site provides social networking services to over 180 million users worldwide and is one of the most well-known online marks in the world. The Complainant has owned over 100 domain names consisting of or comprising the term FACEBOOK since 2004.
The Complainant has secured ownership of the FACEBOOK mark through extensive national and international trade mark registrations worldwide. These include trade mark registrations for the term FACEBOOK covering the United States of America, the A.O.P.I. countries, Australia, Benelux, Burundi, Colombia, Costa Rica, Czech Republic, Djibouti, El Salvador, the European Union, France, Greece, Hong Kong Special Administrative Region of China, Hungary, Iceland, Japan, Republic of Korea, Lebanon, Mexico, Monaco, Morocco, New Zealand, Norway, Poland, Romania, the Russian Federation, Singapore, Switzerland, Taiwan, Province of China and Thailand.
Facebook has been offering services in Iran since September 2006 and, despite the fact that the Iranian authorities apparently blocked access to the Complainant's web site in 2007 and 2008 as of March 2009, it was the 10th most visited web site in Iran.
The Respondent registered the Disputed Domain Name on July 31, 2007. The Disputed Domain Name currently resolves to a web site which states “Under Construction for Book Selling…”
The Complainant sent a cease-and-desist letter to the Respondent on February 2, 2009 to which the Respondent replied on the February 7, 2009 seeking compensation for the transfer of the Disputed Domain Name. The Complainant replied to this e-mail on February 10, 2009 agreeing to refund the Respondent's costs in relation to the Disputed Domain Name provided that they did not exceed €100. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name registered by the Respondent is identical or confusingly similar to the Complainant's FACEBOOK trade mark. The Complainant supports this contention by reference to the fact that the Disputed Domain Name wholly incorporates the Complainant's FACEBOOK trade mark and the addition of the “.ir” top level domain is immaterial in considering the issue of confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant notes that the Respondent is not commonly known by the FACEBOOK name, has not secured any trade mark rights in the FACEBOOK name and has not made any legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant contends that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its trade marks. The Complainant submits that the Respondent cannot claim to have made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of services.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant submits that the Respondent registered the Domain Name in bad faith as it became aware of the fact that the Complainant's online business was one of the most successful in the world.
The Complainant seeks a transfer of the Disputed Domain Name in accordance with paragraph 4(I) of the Policy. B. Respondent
The Panel notes that the Respondent did not include the certification required under paragraph 5(b)(viii) of the Rules in his e-mails responding to the Complaint. In the interests of ensuring that its decision is based on all available information and in accordance with its discretion to determine the admissibility of evidence under paragraph 10(d) of the Rules the Panel is willing to consider the Respondent's responses.
The Respondent submits that the “the internet doesn't belong to anybody and everybody has right to access the information from any place in the world.”
The Respondent contends that he is “us[ing] as a persian expression for the face of a book”. The Respondent submits that “it is my right to use a name that belongs to my thought in order to build up an eBusiness with the goal of selling books after my graduation.”
The Respondent submits that “selecting a name such as doesn't ring any bell in anybody's mind what is exactly the relation between the expression “facebook” and “social gathering”, but selling books based on using has a better meaning with its purpose.” The Respondent contends that his “purpose is completely different than ” as he intends to sell books and that building his web site should take at least 18 months to complete. 6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 or is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence that it is the proprietor of the registered FACEBOOK trade mark in the United States of America, the A.O.P.I. countries, Australia, Benelux, Burundi, Colombia, Costa Rica, Czech Republic, Djibouti, El Salvador, the European Union, France, Greece, Hong Kong SAR of China, Hungary, Iceland, Japan, Republic of Korea, Lebanon, Mexico, Monaco, Morocco, New Zealand, Norway, Poland, Romania, the Russian Federation, Singapore, Switzerland, Taiwan, Province of China and Thailand.
Previous panels have held that the Policy does not require that the mark be registered in the country in which the Respondent operates. It is sufficient that a complainant can demonstrate registered trade mark rights in some jurisdiction. Koninklijke KPN N.V. v. Telepathy Inc.,WIPO Case No. D2001-0217.
The Disputed Domain Name is made up of the registered trade mark FACEBOOK to which the country code top level domain “.ir” has been added. As the panel in Deutsche Telekom AG v. Kaweh Kalirad,WIPO Case No. DIR2008-0002 noted,
“[t]he ‘.ir' suffix is generic, and numerous Panel decisions under the Uniform Dispute Resolution Policy (‘the UDRP'), (the relevant part of which is identical to paragraph 4(a)(i) of the [.ir] Policy), have held that ‘.gtld' and ‘.cctld' suffixes are not taken into account in the comparison between a complainant's trade mark and the disputed domain name”.
The Panel is therefore satisfied that the “.ir” country code top level domain does not serve to distinguish the Disputed Domain Name from the Complainant's registered trade mark. The Panel finds that the Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark. B. Rights or Legitimate Interests
A Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the Respondent of the dispute, use by the Respondent 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) Where 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 trade mark or service mark rights; or
(iii) Where the Respondent is making a legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is generally regarded as prima facie evidence if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant's trade mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
The Panel notes that the Disputed Domain Name is identical to the Complainant's FACEBOOK mark. The Panel accepts the Complainant's contentions that the Respondent is not commonly known by the Disputed Domain Name and that the Respondent has never been authorized by the Complainant to use the Complainant's trade mark. The Panel is therefore satisfied that the Complainant has provided sufficient prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
It remains for the Panel to determine whether the Respondent has legitimate interests or rights in the Disputed Domain Name. The Panel finds that the Respondent has failed to show demonstrable preparations to use the Disputed Domain Name for the purposes of running an online bookshop. The Respondent argues that the word “facebook” is a Persian expression meaning the “face of a book”. The Panel in LIBRO AG v. NA Global Link Limited,WIPO Case No. D2000-0186 held that,
“the mere speculative idea for a bona fide business application of a generic domain name [will not confer] rights or legitimate interests.”
The Panel finds that the Respondent has failed to provide any documentary evidence of demonstrable preparations to use the Disputed Domain Name in connection with an online bookshop, and the fact that the Disputed Domain Name resolves to a web site stating “Under Construction For Book Selling” is insufficient evidence of demonstrable preparations.
It is the Panel's view that the Respondent has failed to adduce any evidence that he is commonly known by the Disputed Domain Name. Further, the Panel notes that the Respondent has not made any legitimate noncommercial use of the Disputed Domain Name. His stated intention of using the web site to which the Disputed Domain Name resolves to sell books does not fall into this category.
In these circumstances, it is clear to the Panel that the Respondent has not rebutted the prima facie case and accordingly finds that the Respondent has failed to demonstrate any rights or legitimate interests in the Disputed Domain Name.
Consequently the Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
The .IR Policy requires a complainant to prove that a Disputed Domain Name was either registered or is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 the complainant; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other location, 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 location or of a product or service on respondent's website or location.
The Panel is willing to infer that based on the worldwide renown of the FACEBOOK mark, that the web site appears to be one of the most popular in Iran (according to “Top Sites in Iran”, at “”), and the fact that the Respondent has stated that he is studying IT and e-commerce, that the Respondent must have been aware of the FACEBOOK mark when he registered the Disputed Domain Name. Indeed the success of the Complainant's social networking web site has been widely reported on the Internet, as well as receiving extensive international television and newspaper coverage. Considering the fame of the Complainant's mark the Respondent could not have had a purpose in registering the Disputed Domain Name other than in some way to create a false impression of an association with the Complainant.
The Panel accepts the Complainant's submission based on PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561 that registration of a domain name which is identical to a complainant's famous mark and trade name, without a showing by the Respondent of any right or legitimate interest (such as legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark at issue) is, in and of itself, evidence of bad faith.
The Panel finds that the Disputed Domain Name was registered in bad faith under paragraph 4(a)(iii) of the Policy and it is unnecessary to go on to consider whether the Respondent used the Disputed Domain Name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Alistair Payne
Presiding Panelist
David H. Bernstein
Panelist
Dae-Hee Lee
Panelist
Dated: July 13, 2009
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