The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells, France.
The Respondent is Denis Khakimov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2019, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information to the disputed domain that differed from the named Respondent in the Complaint. On December 31, 2019, the Complainant submitted an amended Complaint. On December 27, 2019, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On December 28, 2019, the Complainant submitted its request that English be the language of the proceeding and the Respondent has not submitted any comments. On January 29, 2020, the Respondent requested for a Russian translated complaint. The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”) the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint in English and Ukrainian, and the proceedings commenced on January 9, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was January 29, 2020. The Center appointed Kateryna Oliinyk as the sole panelist in this matter on February 7, 2020. 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant, Facebook, Inc., is a provider of online social networking services. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010, 1 billion users worldwide by September 2012 and 2.27 billion users as of September 2018. According to Facebook Reports First Quarter 2019 Results, Facebook has approximately 2.38 billion monthly active users and 1.56 billion daily active users on average worldwide (as of March 31, 2019). Its main website “www.facebook.com” is currently ranked as the 4th most visited website in the world according to information company Alexa. With approximately 85 percent of its daily active users outside the United States and Canada, the Complainant’s social networking services are provided in more than seventy languages. In addition, the Complainant is also available for mobile devices, and in recent years has consistently ranked amongst the top applications on in the market. The FACEBOOK trade mark is currently one of the most famous online trade marks in the world. In 2019, the FACEBOOK brand ranked 14th in Interbrand's Best Global Brands report. The Complainant holds a series of the FACEBOOK trademark registrations worldwide, registered both under national and international proceedings, - United States Trademark Registration No. 3,122,052, FACEBOOK, registered on July 25, 2006; - European Union Trade Mark No. 5722392, FACEBOOK, registered on April 29, 2008; - European Union Trade Mark No. 009151192, FACEBOOK, registered on December 17, 2010; and - International Registration No. 1075094, registered on July 16, 2010, designating various jurisdictions; and specifically Ukraine. In May 2018, the Complainant tried to settle the case through sending the cease-and-desist letter to the Respondent, but with no effect as the Respondent which could be identified under the name "Nico Mcgee" that time refused to transfer the domain name. At various points of time, the disputed domain name resolved to blog-style websites. According to the WhoIs registration profile of the disputed domain name, the domain name The Complainant alleges that the language of the proceedings should be English for the following reasons: (i) The primary language used on the Respondent's website is English, indicating that the Respondent has knowledge of the English language; (ii) it may be inferred the Respondent has sufficient knowledge of the English language so as not to be prejudiced by the adoption of English as the language of the present proceeding; (iii) given that the activities carried out by the Respondent t are illegitimate it would be disproportionate to require the Complainant not to submit the present Complaint in English and incur costs of translation, that may also have the effect of delaying the Complaint filing, running contrary to the aim of the .UA Policy of providing time and cost-effective means of resolving domain name disputes. The Complainant submits that the disputed domain name is identical or confusingly similar to the FACEBOOK trademarks. The mere addition of the respective country code Top-Level Domain (“ccTLD”) “.com.ua” does not constitute a sufficient element of distinctiveness which should be taken into consideration when evaluating the similarity of the FACEBOOK name and trademark with the disputed domain name. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. Given the similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Complainant refers to the precedents defining the burden of proof in UDRP cases and argues that several previous panels have found under the UDRP that once the complainant makes a prima facie case showing that the registrant does not have rights or legitimate interests in the domain name the evidentiary burden shifts to the registrant. The Respondent is not known by the domain name and is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its FACEBOOK trade marks, in the disputed domain name or otherwise. The Complainant further submits that the Respondents cannot assert that the use of the disputed domain name is in connection with a bona fide offering of goods and services as the recent use of the disputed domain names is associated with the revenue generating-scheme. The Complainant further submits the Respondent’s prior use of the disputed domain name was not of a nature to give rise to any rights or legitimate interests by virtue of the Respondent’s use of the domain name in connection with blog-style website that closely resembled the appearance of the official Complainant’s website. Furthermore, the Respondent's blog-style website copied the look and feel of the Complainant's official website, including making use of the same layout and distinctive blue-and-white color scheme. The Complainant finally submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on the Respondent’s website or location. B. Respondent The Respondent did not submit a formal response but has submitted several informal emails in Russian. On December 30, 2019, the Respondent claims that he legally registered and operated the disputed domain name since 2007. The Respondent alleges the Complaint was filed 12 years after registration of the disputed domain name. The Respondent alleges that a delay in bringing the complaint constitutes the bar for filing the case. The Respondent notes that the registration date of the domain name predates the registration date of the International Registration No. 1075094 covering Ukraine. The Respondent also claims that the website is not commercial. On January 2, 2020, the Respondent claimed that the website related to the domain name “had no logo and was not an official website”. Respectively, the Respondent states that the Complaint is not grounded. 6. Discussion and Findings A. Procedural Issues Language of the proceedings The Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Ukrainian. Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, while applying the provision on the language of the proceedings the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition. In deciding whether to allow the proceedings to be conducted in a language other than the language of the registration agreement, or to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. The Complainant has submitted a request that the language of the proceedings be English. Following the Registrar’s confirmation as to the language of the registration agreement and in order to preserve the Panel’s discretion under paragraph 11(a) of the .UA Rules to determine the appropriate language of the proceedings, the Center notified both parties of this discrepancy between the language of the registration agreement and the complaint in both Ukrainian and English. The Respondent has requested for the Complaint to be translated into Russian. The Panel considers that, where a complaint is made in a language other than that of the registration agreement the Respondent should receive notice of the Proceeding in the language of the registration agreement and should have the opportunity to submit its comments regarding the language of the proceeding. Otherwise there is a risk that the Respondent may not understand the proceeding and may be deprived of a fair opportunity to present its case. In this case, the Center made the adequate procedural ‘dual-language’ communication with the Respondent in both Ukrainian and English, explicitly stated that the Complainant seeks English to be the language of the proceedings and noted that to the Respondent has requested Russian to the language of the proceeding. The Respondent submitted his informal response in Russian. Nothing in the communication with the Respondent indicates that the English language posed any difficulty for the Respondent. Furthermore, the Panel notes that the website at the disputed domain name was in part in English. The Center appointed the Panel with the knowledge of English, Ukrainian and the Russian languages to give both parties the fair opportunity to present their cases without any undue burden. In view of all the specific circumstances of this case, the Panel concludes that the Respondent will not be prejudiced by the proceeding being conducted in English and that this has the advantage of avoiding unnecessary further expense on translations. Accordingly, the Panel determines that the language of the proceeding shall be English. 2. Laches. Delay in bringing the complaint The doctrine of laches is invoked by Respondent due to unnecessary delay by the Complainant in filing the initial complaint. Panels have widely recognized that mere delay between the registration of a domain name and the filing of the complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of. Given the similarities between the .UA Policy and UDRP, the Panel will refer to the UDRP precedents when relevant. lUDRP panels have also recognized that the Policy contains no limitation period for making a claim and a delay in bringing a complaint does not provide a defense per se under the UDRP: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition Overview 3.0, section 4.17. As such, and even in the absence of an explanation from the Complainant, the Panel has not drawn a negative inference from the delay in the filing of the Complaint. (See Billards Toulet v. Damon Nelson – Manager, Quantec LLC/Novo Point. LLC,WIPO Case No. D2016-2502). Indeed, the time between the creation date of the disputed domain name in 2007 and the filing of the complaint in 2019 is obviously a significant period of time. However, in the present case this discussion may be considered totally irrelevant, as the Complainant exercised to bring the complaint soon after recent amendments of the .UA.Policy and launch of the procedure for the ‘com.ua’ zone. Before the Complainant was not able to file a complaint under the .UA Policy. Thus, the Panel concludes that the Respondent cannot rely on laches as a defense to the Complaint. B. Identical or Confusingly Similar The first element of paragraph 4(a) of the .UA Policy requires a complainant to establish first, that it has rights in a trade mark or service mark, and secondly, that the disputed domain name is identical or confusingly similar to that trade mark or service mark. As noted in WIPO Overview 3.0, section 1.2.1: "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." The disputed domain name For the purpose of paragraph 4(a)(i) of the .UA Policy, it is not necessary for the Complainant’s trade mark to predate the registration of the disputed domain name (albeit, the mark cited above does so). As explained at section 1.1.3 of the WIPO Overview 3.0; “The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element”. Accordingly, the fact that the international trademark of the Complainant which the Respondent considers to be more material in this case, postdate the registration of the disputed domain name is not relevant for this element of the .UA Policy. When assessing whether the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights, it is well accepted that the countrycode top level domain (ccTLD) is irrelevant in assessing identity or confusing similarity. Accordingly “.com.ua.” does not preclude a finding of confusing similarity between confusion of the disputed domain name and the Complainant’s mark. The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the .UA Policy requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. The Panel determines that the Respondent is not commonly known by the “facebook” name and that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s marks in a domain name or otherwise. The Respondent cannot assert that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the .UA Policy. As noted above, at the time the Complaint was filed the domain name previously resolved to a landing page that included a single link to a third-party website. The footer of the Respondent’s website read "© 2007 – 2018 FACEBOOK.COM.UA". The direction of Internet users from the Respondent's website to the third party website created the misleading impression that the third party website and the services offered therein are endorsed by the Complainant. The Respondent likely received pay-per-click revenue and in any event, such redirection stood to increase Internet user traffic to the third party website, for a commercial benefit. As stated in WIPO Overview 3.0, section 2.9 "[…] panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users." Furthermore, the fact that the disputed domain name no longer resolves to an active website does not support a finding that the disputed domain name is being used in connection with any bona fide offering of goods or services. Given the use of the disputed domain name at the time of the filing of the complaint and the current use the Panel does not accept the Respondent’s allegation that non-commercial use of the domain name establishes the legitimate interest into the disputed domain name and the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered or Used in Bad Faith The Complainant’s FACEBOOK trade mark is inherently distinctive and well known throughout the world in connection with the Complainant’s social network. The Complainant’s FACEBOOK trade mark has been continuously and extensively used since its launch in 2004 and has rapidly acquired considerable reputation and goodwill worldwide. The Panel finds that the Respondent was well aware of the Complainant and had the constructive knowledge of the Complainant’s rights in the FACEBOOK trade mark, and proceeded to register an identical domain name, without authorization, in bad faith. Upon sending the cease-and-desist letter by the Complainant back in 2018, the Respondent has not terminated the abusive registration of the disputed domain name, and has been using for the website through which the Respondent received click-through revenue from the inclusion of such a link on the Respondent’s website. Even if the Respondent did not receive revenue from the link per se, the Respondent cannot disclaim responsibility for the link appearing on its website; See WIPO Overview 3.0, section 3.5. The presence of such a link on the Respondent’s website served to drive traffic to the third party website, thus increasing the gross traffic to that third-party website, to the commercial benefit of a third party. In light of the identity between the domain name and the Complainant's trade mark, Internet users might be misled into believing that the services offered by a third party are either sponsored or otherwise endorsed by the Complainant. The Complainant therefore submits that by using the domain name in such a way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s FACEBOOK trade mark, as to the source, sponsorship, affiliation, or endorsement of its website, in bad faith pursuant to paragraph 4(b)(iv) of the .UA Policy. (see, e.g., WhatsApp Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2019-1038: "The use of the Disputed Domain Name which makes several references to the spy software program 'mSpy', and contains links that lead Internet users to the website 'www.mspytracker.com', where subscriptions for use of the 'mSpy' software are offered for a fee, without any disclaimer clarifying that it has no connection with the Complainant, constitutes a bad faith use of the Disputed Domain Name."). The fact that the disputed domain name no longer resolves to an active website does not prevent a finding of bad faith under the doctrine of passive holding; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the Panel’s view, the Complainant has submitted ample evidence of registration and use of the disputed domain name in bad faith. The Panel does not accept the Respondent's arguments that it is not using the disputed domain name commercially and that it has a legitimate, noncommercial use which constitutes fair use. This evidence is to the contrary. In the Panel's view this argument does not defeat the Complainant’s evidence of bad faith use. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Kateryna Oliinyk
Sole Panelist
Date: March 9, 2020
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