The Complainant is Facebook, Inc. of Palo Alto, California, United States of America, represented by Cooley LLP, United States of America.
The Respondent is Amjad Abbas of Sharjah and Dubai, United Arab Emirates.
The disputed domain name <facebook.me> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. The Complainant elected to have the Complaint determined by a single member panel. On May 10, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2010, 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 for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(the “Rules”), and the WIPO Supplemental Rules for Uniform 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 on May 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2010. The Response was filed with the Center on June 3, 2010. In it, the Respondent also elected to have the dispute determined by a single member panel.
On June 9, 2010, the Center received a Supplemental Filing from the Complainant, which included, among other things, a request for the appointment of a three-member panel in the current proceedings. The Center acknowledged receipt of the Complainant's Supplemental Filing on June 9, 2010. The Respondent communicated with the Center on June 14, 2010, stating his preference for a single-member panel. The Complainant communicated with the Center on June 15, 2010, reiterating its preference for a three-member panel. On June 15, 2010, the Center invited the Complainant's comments on the Respondent's communication of June 14, 2010, to be received by June 18, 2010, with the opportunity for the Respondent to reply by June 20, 2010. The Center noted that if the parties could not agree on the panel composition issue (single member or three member panel), the Center would determine the next step on a preliminary basis, subject to ultimate review by the panel when appointed. The Complainant's comments were received by the Center on June 19, 2010 and two communications from the Respondent were received in response on June 21, 2010.
The parties did not alter their positions: the Complainant contended that a three-member panel should be appointed, and the Respondent adhered to the view that the parties should be held to their original choices, and that a single member panel should be appointed.
The Center advised the parties on June 22, 2010, that it would proceed to appoint a single member panel. In providing that advice, the Center noted that the panel when appointed would have the discretion to review the circumstances of its appointment, including, if found warranted in the circumstances, recusal and the making of a request to the Center to appoint a three-member panel. The Center also advised the parties that it would be for the panel when appointed to rule on the admissibility or otherwise of the Complainant's Supplementary filing, and to order such other procedural steps as the panel might deem fair, expedient, or otherwise appropriate, having regard to its powers under paragraph 10 of the Rules.
The Center appointed Warwick Smith as the sole panelist in this matter on June 22, 2010. 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.
By Procedural Order No. 1 made on June 29, 2010, the Panel declined to recuse himself for the purpose of inviting the Center to appoint a three-member panel. The Panel also declined to admit most of the Complainant's Supplementary Filing: the only part of that document which the Panel exercised its discretion to receive and consider was Annex E, being a declaration made by the Complainant's domain name manager relating to the authenticity of one of the exhibits which had been produced with the Complaint. The Respondent was given until July 2, 2010 to file a supplementary Response, limited to the matters traversed in Annex E to the Complainant's Supplementary Filing.
On July 1, 2010, the Respondent sent an email to the Center requesting an extension of time to file a Supplementary Response, citing an illness in his family which had prevented him from attending to the Supplementary Response in a timely manner. The text of the Respondent's email suggested that he may have been under the mistaken impression that the proceeding would continue as a three-member panel proceeding.
By procedural direction made on July 2, 2010, the Panel confirmed that the proceeding would continue as a single-member panel proceeding. The Panel also extended the time for the Respondent to file his Supplementary Response, to July 5, 2010.
The Respondent filed a Supplementary Response on July 5, 2010. It consisted of no fewer than 13 pages, with 3 annexures, and it included material in response to the entire Supplemental Filing of the Complainant (notwithstanding the Panel's clear direction that the only part of the Complainant's Supplemental Filing that would be admitted was Annex E, and that the Respondent's Reply should be limited to addressing the matters traversed in Annex E).
The Panel has disregarded those parts of the Respondent's Supplementary Response which went beyond the limited scope permitted by Procedural Order No. 1, and limited its consideration to that part of the document which appeared to be truly responsive to the Complainant's Reply Annex E.
The Panel's reasons for making the orders and directions made in Procedural Order No. 1, and on July 2, 2010, are set out in Section 6A of this Decision.
By further procedural direction made on July 6, 2010, the time for the Panel to give its decision was extended to July 13, 2010.
The Complainant, a Delaware Corporation, is a leading provider of online social networking services. It says that its website at “www.facebook.com” is among the top two most-visited websites in the world. According to the Complaint, the Complainant's service had by August 2008 over 100 million active users around the world. The figure is now said to be over 400 million active users.
The Complainant owns numerous FACEBOOK trademarks around the world. It has a pending application to register the FACEBOOK mark in the United Arab Emirates (the Respondent's country of residence). That application was filed on April 16, 2008.
The Complainant referred to a number of cases decided under the Policy in which it has prevailed. These cases have noted that the FACEBOOK mark consists of a coined expression, which is inherently distinctive (see Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193, Facebook Inc. v. Talkbeans Media Limited, WIPO Case No. DIE2007-0009, and Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007). The panel in the last of those cases, which was decided on June 4, 2008, noted that the Complainant's mark is “well-known internationally” and that its online social networking services are “internationally renowned”.
The Domain Name was registered on August 14, 2008.
In the Response, the Respondent says that he has never created any website at the Domain Name, and it hasn't been used. He says that he wanted to point the Domain Name to his own home page, and wanted to engage a creative agency to build a website for him. However, he had to put that on hold “due to financial reasons”. He says that he has never made a cent out of the Domain Name. He has never tried to sell it, nor personally used it for pay-per-click advertising purposes. However, the Registrar did set the Domain Name to its default parking page automatically when the Domain Name was registered, and the Domain Name pointed to that default page until the Respondent received the present proceeding. He says that he then attempted to forward the Domain Name to his personal home page, even though the personal home page was not ready.
The Complainant says that, prior to April 2010, the Domain Name was among a number of domain names which were listed for sale on a website operated by the Respondent at “www.batfind.com” (“the batfind website”). The Complainant says that these domain names were listed for sale at a “minimum” price of USD2,000. The Complainant produced what it said was a true and correct printout from the batfind website, printed on or about April 12, 2010. That annexure to the Complaint did indeed list a number of domain names, including the Domain Name, which appeared to be for sale at the minimum price mentioned in the Complaint.
In his response, the Respondent says that the batfind website was nothing more than a trivial, one-page website, which he used to show off some of the domain names that he owned, to his friends. He says that it was never used for advertising, and it was never put on any search engine. The Respondent denies that the Domain Name was ever listed for sale on the batfind website as the Complainant contends. Indeed, the Respondent contends that the relevant annexure to the Complaint is not in fact a print-out from the batfind website, but consists of two separate snapshots that are not consistent.
In the Complainant's Supplemental Filing, there was a declaration made by the Complainant's domain name manager, declared under penalty of perjury under the laws of the United States of America on June 8, 2010. The Complainant's domain name manager declared that she visited the batfind website on or about April 12, 2010, it being publicly accessible. She confirmed in her declaration that there was a prominent statement on the batfind website on April 12, 2010 that the listed domains were for sale at a minimum price of USD2,000, and that the Domain Name was included among the domain names listed. She confirmed that she took screenshots of the batfind website as it stood on April 12, 2010, to record its content, and that those screenshots were the ones attached to the Complaint in this proceeding.
The Complainant's domain name manager went on to explain that she took the screenshots by taking a “print-screen” of her entire computer display, which consisted almost entirely of a maximized Firefox Internet browser window displaying the batfind website. The address bar confirmed the domain name. However, it was necessary to take two screenshots due to the length of the web page, although the content featured in each screenshot overlapped.
The Respondent was permitted to reply to that declaration. The Respondent filed a Supplementary Response dated July 5, 2010, nearly all of which consisted of material going far beyond the scope permitted under Procedural Order No. 1. However, the Respondent's Supplementary Response did address the question of the authenticity of the Complainant's April 12, 2010 screenshots from the batfind website, in the following terms:
“Moreover, it is not true that I listed the domain faceBOOK.ME for sale ‘minimum US$2,000'.
Complainant's Annex M is not a printout as claimed in complainant point 25. Complainant's Annex M's is two separate snapshots are not consistent, and which do not show that I purposely wanted to sell faceBOOK.ME with ‘minimum $2,000'. I paid US$5,015 plus $99.98 for Landrush subscription back in 2008 when I bought faceBOOK.ME (check Annex 1). So it is not logical that I list it in a one-page site that is unknown to the world!! and I ask for $2,000 as a minimum!!
The above facts show that the claim in Complainant point 25 lack integrity, are based on mere interpretation and is totally not logical.
I can authorize the panel to request archives of the page, to see the page in full at that time to confirm that I did not offer to sell the domain faceBOOK.me, and that Complainant interpretation and representation is wrong.”
In addition to the Domain Name, the Complainant says (and the Respondent does not deny) that the domain names <altagoogle.com>, <oracle.me> and <trump.me> were listed on the batfind website as at April 12, 2010. The Complainant says that the Respondent was also operating pay-per-click advertising pages at “www.oracle.me” and at “www.trump.me”.
The Respondent says that he registered these .me domain names during the landrush period, and paid high amounts for them. According to the Respondent, they were collected as part of his hobby, with “potential possible future plans to create non-profit personal blogs”. The Respondent asserts that he never used those domain names in bad faith, and never used them to obtain illegal commercial gain.
On April 20, 2010, the Complainant sent a cease and desist email to the Respondent, requesting the immediate transfer of the Domain Name. The Respondent did not reply to that email.
After April 20, 2010, the Domain Name was pointed to the Complainant's website at “www.facebook.com”. According to the Complainant, the Respondent also altered the batfind website to remove the listing of the domain names for sale.
The Respondent acknowledges receiving the cease and desist email, but says that he was travelling at the time, and endeavoring to obtain medical assistance for a close relative, who had suffered a stroke. He did not respond to the email. However, he did respond to an email dated April 28, 2010 which he received from the Registrar. That email advised him that the Registrar had been contacted by the Complainant, who was alleging that the Domain Name was infringing one or more of the Complainant's famous trademarks. The Registrar advised the Respondent that in an effort to resolve the issue, it would be willing to offer the Respondent some compensation in exchange for the Domain Name, before the Complainant filed a proceeding under the Policy.
The Respondent replied to the Registrar on May 6, 2010. He noted that, as the Registrar was well aware, “.me” domain names were marketed as personal domain names, under the slogan “it's all about YOU”. They were not intended to be commercial domain names like .com and .net. He explained in his email to the Registrar that when he registered the Domain Name, he did not think the Complainant would want to get the Domain Name. Moreover, the Domain Name was made available during the relevant launch period by the Montenegro domain name registration authority.
The Respondent went on to advise the Registrar that he had bought several .me domain names, and had other .com and .net domain names which he had held for more than six years. The reason the Respondent offered to the Registrar for holding these domain names was that he enjoyed collecting domain names, especially unique ones – he achieved “joy and satisfaction with my ‘IT/Internet' friends here”.
The Respondent told the Registrar in his May 6, 2010 email that he paid around USD6,000 to win an auction for the Domain Name, and that during the auction process he was checking almost every 10 minutes on his mobile phone over a period of more than five days until he was confirmed as the highest bidder. As for his future intentions for the Domain Name, the Respondent told the Registrar the he would not sell it or transfer it or forward it to an improper site, or otherwise use it in bad faith. The Respondent told the Registrar that one of his ideas was to point the Domain Name to his personal Facebook page after he had completed that page, so that he would have “the most unique personal Facebook page URL in the world!! … hence I communicate to all my friends that my Facebook page is ‘www.FaceBook.me'!! They will not believe it, until they try it. Wow, that would be great.”
The Respondent told the Registrar that he would not transfer the Domain Name to the Registrar or to the Complainant. He said that he was not doing anything wrong with the Domain Name, and advised that he had more than 250 domain names, many of them held for more than six years. He said that he had not sold or put up any of those domain names for auction. The Respondent asked the Registrar to pass on his communication to the Complainant, in the event that the Registrar had contacted the Respondent on the Complainant's behalf.
As noted above, after he received the Complainant's cease and desist email, the Domain Name was pointed to the Complainant's website. The Respondent's explanation is that, when he received the Complainant's cease and desist email, he felt that he had to terminate the pay-per-click advertising which the Registrar had been running at the website to which the Domain Name had resolved. He decided to point the Domain Name to his personal home page at “www.facebook.com/amjadone”. However, things did not work out as the Respondent says he intended – as he put it in his Response: “[f]or some reason, the forwarding to my home page worked for people who were logged in to facebook already, for people who were not logged into facebook they will see the ‘www.facebook.com' which was not my intention.”
In summary, the Respondent says that the Domain Name was available during the landrush period, after a sunrise period had been provided for trademark owners to register their trademarks if they wished to do so. The Complainant did not register its trademark during the sunrise period, and the Respondent saw the Domain Name as a suitable domain name to add to the collection of domain names which he keeps as a hobby, to show off among his friends who do the same. There was also the possibility of his using the Domain Name to point to a personal home page, or for an interactive blog where people could offer their services and could be booked by their profile (with “face”).
The Complainant contends:
(i) The Domain Name is identical to the Complainant's famous FACEBOOK mark.
(ii) The Respondent has no rights or legitimate interests in the Domain Name, for the following reasons:
(a) By the time the Respondent registered the Domain Name on August 14, 2008, the Complainant had well-established rights in the FACEBOOK mark, the <facebook.com> domain name, and in its website at “www.facebook.com”. The Respondent was undoubtedly aware of the Complainant's activities and use of its domain name when he registered the Domain Name. When a respondent has constructive notice of a trademark, yet registers a confusingly similar domain name, the respondent cannot be said to have a legitimate interest in the domain name (citing Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX, WIPO Case No. D2005-0179).
(b) The Respondent is not commonly known by the Domain Name, and he has not secured or sought any trademark rights in the Domain Name.
(c) The Respondent is not an authorized dealer, distributor, or licensee of the Complainant.
(d) There is no reason for the Respondent to have selected the Domain Name, other than to create an association with profit from the FACEBOOK mark. That does not create a legitimate interest in the Domain Name.
(e) The use of an identical domain name to redirect users to a third party website cannot amount to a bona fide offering of services (citing GoDaddy.com, Inc. v. Chad Lovell, WIPO Case No. D2007-1289).
(iii) The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(a) The Respondent registered the Domain Name with full knowledge that he could derive profit from the Domain Name by either attracting users to his website or by selling the Domain Name at a substantial mark up (citing eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, and Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055 – registration of a domain name containing a famous mark is strong evidence of bad faith).
(b) It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant's brand at the time the Domain Name was registered.
(c) Where a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith (citing Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
(d) The Respondent has been guilty of the kind of bad faith registration and use described at paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
(e) The Respondent's use of the Complainant's famous trademark in the Domain Name, combined with his offer to sell the Domain Name at a price far in excess of his likely out-of-pocket costs (reckoned by the Complainant to be in the order of USD10 to USD20), amounts to bad faith use of the Domain Name. By offering the Domain Name through a publicly accessible website, the Respondent was offering it for sale to the Complainant, to any of the Complainant's competitors, and to others. Those circumstances fall within the example of bad faith registration and use provided at paragraph 4(b)(i) of the Policy (citing Playboy Enterprises International Inc v Pitts, WIPO Case No. D2006-0675).
(f) The Respondent's registration of other domain names that are identical to third party trademarks, is strong evidence that he registered and has been using the Domain Name in bad faith (citing eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259, and Société BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342).
(g) The Respondent continues to use the Domain Name despite the Complainant's efforts to resolve the matter informally. A failure to positively respond to a complainant's efforts to make contact provides strong support for a determination of bad faith registration and use.
The Respondent contends:
(i) The Domain Name is not identical or confusingly similar to any relevant trademark owned by the Complainant. First, “.me” and “.com” are different top level domains. Secondly, “Facebook” was not a fully registered trademark in either Montenegro or in the United Arab Emirates in August 2008, when the Respondent registered the Domain Name. Nor was “Facebook” significantly popular in the United Arab Emirates or in Montenegro before June 2008, when the Respondent applied for the Domain Name. It is for the Complainant to prove otherwise. Thirdly, the Complainant should define what it means when it refers to the “facebook” domain names which it owns. There are tens, maybe hundreds of domain names containing the word “facebook” in them, which are not registered to the Complainant (one of them is <thefacebook.me>).
(ii) The Respondent has rights or a legitimate interest in the Domain Name, having regard to the following matters:
(a) The .me domain space was promoted by the owner of that domain space as a domain space “about ME” – a perfect domain name to hold content related to the registrant as a person.
(b) The Respondent subscribed for the Domain Name during the landrush period, through an ICANN-approved process managed by <domain.me> and by the Registrar.
(c) The Respondent paid USD 5,115 to register and own the Domain Name officially and legally. He won the auction, and he is the legal owner of the Domain Name.
(d) The Respondent's objective in applying for the Domain Name was to enjoy it, and to have his personal home page at the Domain Name and/or use it as a site for an interactive blog where people could offer their services and could be booked by their profile with face.
(e) The Complainant had enough time during the sunrise period, when trademark owners were given the opportunity to register their “trademark.me” domain names, to register the Domain Name if it was interested in doing so. The Complainant did not do so.
(f) The Respondent denies having constructive notice of the Complainant's FACEBOOK mark, in either his home country (Jordan), his country of residence (the United Arab Emirates), or in the country which owns the .me ccTLD (Montenegro).
(g) The Respondent registered the Domain Name without any intention to sell it or transfer it. He wanted to use as it was marketed to him, as a personal home page or as a personal blog. Moreover, the Respondent registers domain names as a hobby, and to enjoy them among his circle of friends.
(h) The Respondent has been pointing the Domain Name to his personal home page, for noncommercial fair use. There has been no intention for commercial gain misleadingly to divert consumers, and the plaintiff has not proved otherwise.
(iii) The Respondent did not register, and has not used, the Domain Name in bad faith. The Respondent relies on the following matters:
(a) The Respondent denies registering the Domain Name because it is confusingly similar to the Complainant's <facebook.com> domain name.
(b) The Respondent does not remember that the FACEBOOK mark had prominence at the time he registered the Domain Name, specifically in the United Arab Emirates or in Montenegro. FACEBOOK was not then a prominently famous mark in either of those countries, and there were tens if not hundreds of social websites at that time.
(c) The Domain Name has not resolved to any website containing content created by the Respondent. Because the Respondent has not been using the Domain Name, the Complainant cannot say that the Domain Name “is being used” in bad faith.
(d) There are tens of registered domain names with the pattern “facebook.com” in them, and those domain names are not managed by the Complainant. To the Respondent's knowledge, the Complainant has not filed cases under the Policy against these registrants (see for example <iFACEBOOK.com>, <myFACEBOOK.com>, <eFACEBOOK.com> and <aFACEBOOK.com>).
(e) The Respondent denies any intention to trade the Domain Name, or to confuse Internet users, it is for the Complainant to prove otherwise.
(f) The Respondent is an individual, and is not a competitor of the Complainant.
(g) The Domain Name was not registered by the Respondent primarily to disrupt the Complainant's business.
(h) The Domain Name was not registered in an intentional attempt to attract for commercial gain, Internet users to the Respondent's home page.
(i) The Domain Name could be used as a verb – “faceBOOK.me” could mean “BOOK me by seeing my profile and face”. Such a Domain Name could be used for promoting girls, models, conference speakers, freelancers, consultants, job seekers, etc. Alternatively, the Domain Name could have been used by the Respondent, as he has previously participated in activities as a speaker, a model, a photographer, and a freelancer.
(j) As for the registration of the domain names <oracle.me>, <trump.me>, and <altagoogle.com>, these domain names are not the subject of the present Complaint. However, many of the contentions raised in the Response apply fully or partially to these domain names. There are various senses in which the words “oracle” and “trump” might be used as a verb. For example, one of the meanings of the word “trump” is to “proclaim or announce with or as if with a fanfare”. A blog for musicians could be created to share experiences with relevant musical instruments, at a suitable “trump” website. As for the <altagoogle.com> domain name, the Respondent has recently left that domain name to expire, and does not intend to renew it. Even this domain name has not been used in bad faith, and the Respondent could have used it. There are tens of domains which have the word “google” in them, and they are being used, some of them for commercial gain. However, the Respondent felt that he needed to prove that he does not register domain names for commercial gain.
(k) The Respondent did not fail to address the Complainant's cease and desist email. He responded by stopping the free parking page established by the Registrar. He could not disable the page, so he pointed the Domain Name to his personal home page. For some reason, the Domain Name has instead been resolving to the Complainant's web page. The Respondent can do nothing about that.
(l) When the Respondent received the Complainant's cease and desist email, he was very busy travelling and attending to a family medical emergency, and was not prepared to reply to the Complainant's legal department. Instead, he asked the Registrar to convey his reply to the Complainant.
In their initial filings, both parties opted for a single member panel. It was only after the Response was received that the Complainant sought to change its election.
The Complainant sought to characterize the requested change as a mere amendment to the Complaint, of a kind not infrequently allowed by the Center or by panels appointed to decide cases under the Policy. The Panel does not accept that characterization.
The choice between a single-member panel and a three-member panel is an important step in the dispute resolution process, and the first question is whether the Center has power to accept an amendment to a complainant's panel designation made in its Complaint after formal notification of that Complaint to the Respondent and commencement of the administrative proceeding. In the Panel's view, the Center has no such power.
The Panel's starting point in coming to that view, is that the Policy is intended to provide a quick, relatively inexpensive dispute resolution system. Timeframes are accordingly short. A complainant must cure any administrative deficiency in its complaint within five days, or the complaint is deemed to be withdrawn. Once a response has been received, the Center only has five working days (where neither party has designated a three-member panel) to appoint a single panelist (Rules, paragraph 6(b)), and the Panel when appointed only has fourteen days (absent exceptional circumstances) to give its decision. The Panel is required to conduct the proceeding fairly, but with “due expedition” (Rules, paragraph 10(c)).
Given the “fast-paced” character of proceedings under the Policy as just described, the Panel considers it unlikely that the framers of the Policy intended to give the parties the ability to delay the proceeding by changing their panel elections if they wished to do so.
Turning to the specific provisions of the Rules relating to panel appointments, the Panel notes that both parties are required to address the issue of panel designation in their initial filings (Rules, paragraph 3(b)(iv) for the complainant, and paragraph 5(b)(iv) for the respondent). Of course the respondent might not have any election to make if the complainant has designated a three-member panel in its complaint.
Paragraph 6(b) of the Rules provides as follows:
“(b) If neither the Complainant nor the Respondent has elected a three-member Panel (paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. The fees for a single-member Panel shall be paid entirely by the Complainant.”
Paragraph 6(c) of the Rules then goes on to prescribe the steps the Provider must take: “(c) If either the Complainant or the Respondent elects to have the dispute decided by a three-member panel …”.
The Complainant's argument is, in essence, that before the Center had moved to appoint a single panelist under paragraph 6(b), the Complainant elected a three-member panel (in the Complainant's Supplementary Filing dated June 9, 2010). On that argument, paragraph 6(b) of the Rules had no further application, and the Center was obliged to proceed with the steps to appoint a three-member panel under paragraph 6(c).
A contrary interpretation of paragraph 6(b) of the Rules, is that the reference to “elected” in the paragraph refers only to the parties' elections made in their initial filings – if in the complaint and the response both parties have designated a single member panel, then “neither the Complainant nor the Respondent [would have] elected a three-member Panel”, and paragraph 6(b) would apply.
The Panel finds the second of those interpretations far more compelling. First, there is the fast-paced nature of the proceedings, and the fairly peremptory time limits prescribed throughout the Rules. Those short timeframes do not suggest an interpretation of the Rules which could permit a delay of days or even weeks for no better reason than that a party has changed its mind on a matter it was required to address in its initial filing.
Secondly, if the complainant could amend its election and request a three-member panel at any time up to the point when the Center actually appointed a single-member panel, the Center might pointlessly waste quite a lot of time endeavoring to find and appoint a single-member panel under paragraph 6(b) before it received the communication from the complainant advising that it had changed its mind. Any interpretation of the Rules which would open the door to that possible outcome seems unlikely to be correct.
Thirdly, if the Center did have the power to accept an amended panel designation from a complainant after a response had been received, one would not expect to find anything in the Rules which expressly prevented the Center from exercising that power, particularly where the complainant was not in default in any way. But there is such a provision in the Rules. Paragraph 5(c) of the Rules addresses the situation where the complainant has designated a single-member panel, and the respondent opts for a three-member panel. In such a case, the paragraph requires that the respondent must pay one-half of the applicable fee, and it must make the payment with the response. The paragraph goes on to provide:
“In the event that the required payment is not made, the dispute shall be decided by a single-member Panel” (the Panel's emphasis).
In that situation the respondent's omission to pay the fee has the effect of determining, there and then, that the proceeding will continue as a single-member panel proceeding. The terms of paragraph 5(c) are mandatory: the Center must appoint a single-member panel. There is no mention of the Provider having any discretion, nor anything to suggest that the complainant in the situation covered by paragraph 5(c) might have some ongoing ability to change its mind, and tell the Provider that it now wants a three-member panel.
Paragraph 5(c) addresses a situation where a respondent wishes to have the dispute determined by a three-member panel. But even if the complainant in such a case (on reading the response) concludes that the dispute would be better suited to determination by a three-member panel, the complainant can do nothing to bring that situation about – the respondent having omitted to pay the fee, the proceeding must continue as a single-member panel proceeding. If that would be the result in a situation where both parties eventually wanted the same thing – a three-member panel – it is difficult to see why a desire to change its election to something the Respondent said it did not want, should place the complainant in any better position.
It seems to the Panel that the “sudden death” nature of the wording of the last sentence of paragraph 5(c) of the Rules – “the dispute shall be decided by a single-member Panel” – is only really consistent with the interpretation that the matter of panel composition (single or three-member panel) was intended to be resolved, once and for all, by not later than the time of the respondent filing its response (or the expiration of the time for a response if the respondent does not file one).
Consistent with the foregoing analysis, the Panel notes his understanding that there has never been a case where the Center has permitted a complainant to unilaterally change its election from a single-member panel to a three-member panel, after a response has been filed in which the respondent called for a single-member panel.
The Panel concludes that the Center was correct in declining the Complainant's request that it appoint a three-member panel.
There is nothing in the Rules which contemplates a (sole) panelist directing the appointment of a three-member panel. The sole panelist would have to recuse himself or herself in such a case, in circumstances where none of the usual grounds for recusal (e.g. the panel having a relationship of some sort with one of the parties which would or might create reasonable doubts about the panel's impartiality) would be present.
More fundamentally, the appointment of panels is a function of the Provider under the Rules, and this Panel considers that his jurisdiction could not extend to directing the Center on the kind of panel it should appoint. The most he could reasonably do would be to recuse himself, and invite the Center to reconsider the question of panel appointment. But there would be no point in doing that if the panel believed, as this Panel does, that the Center has no power to allow the Complainant to change its election.
Furthermore, the Panel sees nothing in the circumstances of this case which would justify allowing such an amendment in any event. The Respondent opposed the amendment (at least before the present Panel was appointed), and the issues in the case do not appear to be unusually complex, novel, or important. (Essentially, the Respondent is simply saying that he registered the Domain Name as part of a hobby involving the collection of interesting domain names, which he could show off to his friends.)
Both parties are entitled to the expedition which the Rules contemplate, and if a complainant has elected the relatively time expedient single member panel procedure, and the respondent has made a similar election, this Panel considers that (even if the panel had the necessary jurisdiction) it would not normally be consistent with the “due expedition” requirement to allow a complainant to amend its election after a response had been filed and a panel appointed.
For the foregoing reasons, the Panel declines to recuse himself and invite the Center to consider appointing a three-member panel.
The Respondent's late expression of apparent willingness to go along with the appointment of a three-member panel (when that course had previously been opposed by him), may have been based on a misunderstanding of the Panel's Procedural Order No. 1.1 But whatever the Respondent may have believed in respect of Procedural Order No. 1, his apparent change of mind on the panel composition issue cannot affect the Panel's conclusion that the proceeding has to continue as a single-member panel proceeding. Quite apart from the jurisdiction and delay questions, by July 1, 2010 the Panel had not only been appointed but had embarked on his consideration of the case, and issued a procedural order. Once a panel has been appointed and embarked on its functions under the Policy, it could never be right to allow a party to seek to change its panel election (assuming for the sake of argument that the necessary jurisdiction existed, which the Panel does not believe to be the case). To hold otherwise would be to open the door to all manner of abuse – for example, a party who was concerned that it might not prevail in the proceeding, perhaps because of views expressed by the panel in a similar case in the past, would be able to “get rid of” that panel by changing its election to a three-member panel. Or the abuse might simply consist of changing the election for the purpose of obtaining an unwarranted delay.
The Rules do not provide for complainants to make statements in reply, and generally such statements will only be received to the extent that procedural fairness requires that they be received – for example, if a response raises substantial facts or arguments which could not with reasonable diligence have been anticipated by the complainant and dealt with in its complaint. In such circumstances, it will often be appropriate to permit a complainant to address the unexpected facts or arguments in a Reply.
There was little of that nature here. The Complainant's Reply Brief consisted primarily of argument intended to counter the arguments in the Response, together with a repetition of arguments already made in the Complaint. The only part of the Response which the Panel considered to be both significant and reasonably capable of taking the Complainant by surprise, was the challenge the Respondent made to the authenticity of the document attached to the Complaint which the Complainant described as a screenshot taken from the Respondent's website. The Panel considered it appropriate in those circumstances to admit the declaration (Annex E to the Reply) of the officer of the Complainant who took the screenshot in question, subject to allowing the Respondent a right of reply, limited to the matters traversed in that declaration.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
The Complainant has proved this part of its case. The Respondent has not disputed that the Complainant is the registered proprietor of the mark FACEBOOK in numerous jurisdictions around the world, and that mark is identical to the Domain Name. Contrary to the Respondent's submissions, the generic suffix “.me” is not taken into account in the comparison which is required by paragraph 4(a)(i) of the Policy – see, for example, L'Oréal v. Avraham Mattan, Vichycare Customer Service, WIPO Case No. D2007-0122, Sidestep, Inc. v. Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212, and the decision of this Panel in Sanderling Pty Ltd, trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385.
The Respondent submits that the Complainant's case must fail because it has not proved that it has any rights in the FACEBOOK mark in either Montenegro (the country to which the “.me” country code applies) or the United Arab Emirates (where the Respondent is domiciled). That submission is misconceived. Numerous panel decisions have now established that ownership of a trademark or service mark anywhere in the world is sufficient for a complainant to establish a relevant “right” in that mark for the purposes of paragraph 4(a)(i) of the Policy (see paragraph 1.1 of the Center's online document: “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”).
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 domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is identical to the Complainant's famous mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. The Respondent does not claim any trademark or service mark rights in the Domain Name. The Respondent is not commonly known by the Domain Name, so there could be no right or legitimate interest under paragraph 4(c)(ii) of the Policy. Nor could there be any right or legitimate interest under paragraph 4(c)(i) of the Policy – the Respondent has said that he has not made any active use of the Domain Name at all, let alone used the Domain Name in connection with any bona fide offering of goods or services.
The foregoing circumstances are sufficient to establish a prima facie case of “no right or legitimate interest”, so the evidential onus shifts to the Respondent. For the following reasons, the Respondent has failed to persuade the Panel that he holds a right or legitimate interest in the Domain Name, whether under paragraph 4(c)(iii) of the Policy or on any other basis:
(i) The Respondent has not denied that he was aware of the Complainant and its FACEBOOK mark when he registered the Domain Name in August 2008. Nor could he have sensibly made any such denial – the evidence is that the Complainant's website at “www.facebook.com” had some 100 million visitors worldwide by August 2008, and in a June 2008 decision in a proceeding under the Policy the panel found that the FACEBOOK mark was “well-known internationally”. Furthermore, the batfind website on April 12, 2010 was offering a number of domain names, including the Domain Name, for sale at prices expressed in dollars. That suggests that the Respondent, at least by April 2010, had his eye on the American market. So does the Respondent's decision to acquire and register the domain names <trump.me> and <oracle.me>. The evidence overwhelmingly supports the conclusion that the Respondent was well aware of the Complainant and its famous mark when he registered the Domain Name.
(ii) Anyone registering a domain name which is identical to an internationally famous mark like FACEBOOK must be aware that any website at the domain name will attract some Internet users who are looking for the Complainant's website in the .me domain space.
(iii) With a domain name consisting of a trademark as famous as the FACEBOOK mark, its very use by someone having no connection with the goods or services marketed under that famous mark is suggestive of “opportunistic bad faith” – see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and the case cited by the Complainant, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. It is not helpful for the Respondent to theorize in 2010 what possible meanings the Domain Name might have: the critical matter is what the Respondent actually intended to do with the Domain Name when he registered it in August 2008.
(iv) The Panel is not persuaded by the Respondent's denial of any intention to sell the Domain Name. The Complainant's domain names manager explained succinctly, in a formal declaration, that she had visited the batfind website on or about April 12, 2010, and that she copied the batfind website as it then stood. She explained that the screenshots required two pages, and that the relevant exhibit to the Complaint contained both pages, with an overlap. That perfectly plausible explanation was met with a bare denial from the Respondent, and an assertion that the “two separate snap shots” were not “consistent”, and did not show that the Respondent purposely wanted to sell the Domain Name with “minimum $2,000”. When the Respondent was offered the opportunity to reply to the declaration from the Complainant's domain names manager, he essentially just repeated the assertions he had made in the Response, and said that he could authorize the Panel to request archives of the page, so that it could be seen in full.
(v) It must have been obvious to the Respondent when he first saw the Complaint, that the exhibit attached to the Complaint which appeared to show that he had attempted to sell the Domain Name, along with a number of other domain names consisting of the names of famous companies or businesses, might be seen as providing strong support for the Complainant's case. The Respondent is clearly experienced in the ownership of domain names (he told the Registrar in his email of May 6, 2010 that he had held over 250 domain names, and that “I know the laws for domain name disputes”), and he would have been well aware of paragraph 4(b)(i) of the Policy and of the potentially damaging nature of the Complainant's evidence that he had been trying to sell the Domain Name at a minimum price of USD2,000. In those circumstances, it was for him to take all steps and produce all evidence necessary to show the Panel that the exhibit produced by the Complainant was not authentic. It was not for the Panel to go chasing that sort of evidence, especially where the Respondent's main point of contention appeared to be not that the claimed screen shot from the batfind website as at April 12, 2010 was not authentic, but that the Complainant was endeavoring to have the Panel draw inferences from that website which were not logical or appropriate. On the evidence produced, the Panel concludes that the Respondent did offer the Domain Name for sale on the batfind website as the Complainant has alleged, and that he also offered the domain names <oracle.me> and <trump.me> for sale on the same “minimum price” basis.
(vi) The Respondent's argument that he registered the Domain Name during an “open” period, after the sunrise period during which trademark owners could seek to register their marks in the .me space, does not assist him. When the Respondent registered the Domain Name, he warranted to the Registrar that, to his knowledge, the registration of the Domain Name would not infringe upon or otherwise violate the rights of any third party. His registration agreement with the Registrar, which incorporated the Policy, noted that “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights” (Policy, paragraph 2). The warranty at paragraph 2 bound the Respondent regardless of whether the Complainant had or had not availed itself of the sunrise period to register its mark as a domain name in the .me space. As the Panel found in the very recent case of N.V Nutricia v. Ruglobal, Haider Bilal, WIPO Case No. D2010-0602:
“The Panel finds that the mere acquisition of the Domain Name during an open registration period via an accredited registrar is not in and of itself adequate for awarding the Respondent a right or legitimate interest in the Domain Name. If this was the case, then the administrative procedure as provided for by the UDRP Policy would be essentially of no use (Pivotal Corporation v. Discovery Street Trading Co Limited, WIPO Case No. D2000-0648).”
(vii) The Respondent's various explanations for registering the Domain Name are not persuasive. The reality appears to be that the Respondent has done nothing with the Domain Name, other than allow the Registrar to use it to derive pay-per-click advertising revenue. The Respondent says on the one hand that he had to defer engaging a creative agency to create a website for him at the Domain Name “due to financial reasons”, but on the other hand says that he paid over USD 5,000 for the Domain Name itself, and paid “high amounts” for the other very high profile domain names which he acquired. His suggestion that the Domain Name and the “oracle” domain name could be used as verbs, seems to the Panel to be contrived – the notion that <facebook.me> could mean to a significant number of users “Book me by seeing my profile and face”, would in the Panel's view involve a stretching of ordinary English usage beyond anything the Panel has encountered. Similarly, the idea of any but a select few English scholars understanding the word “oracle” as a verb, seems to the Panel to be improbable. It all has the look of an “after the event” attempt to justify the registration of these domain names, ignoring the reality that the vast majority of Internet users coming across these domain names would associate them with the corresponding famous trademarks.
(viii) What the Complainant may or may not have done with regard to other registrants who have registered domain names incorporating the expression “facebook”, is not relevant to the present Complaint. For all the Panel knows, the Complainant may be in the process of taking steps to acquire those domain names.
(ix) The Respondent appears to be saying that he spent thousands of dollars acquiring the Domain Name, and other domain names consisting of internationally famous marks, for no other purpose than to impress his friends. Especially in circumstances where the Respondent has contended that financial reasons have prevented him from creating a website at the Domain Name, the Panel just does not find that explanation credible. Nor is the Panel prepared to put any weight on the Respondent's claim that he had (as he put it at one part of the Response) “potential possible future plans” to create non-profit personal blogs. The greater likelihood appears to the Panel to be that the Respondent found that the Domain Name had not been taken during the .me sunrise period, and established that the Complainant did not at that time have any registered rights in its FACEBOOK mark in either Montenegro or the United Arab Emirates. The Respondent took the opportunity to acquire the Domain Name and hold it until the inevitable happened and the Complainant approached him to acquire the Domain Name. In the meantime, he did nothing with the Domain Name other than advertise it for sale on the batfind website, and allow the Registrar to use it for pay-per-click advertising.
(x) Having regard to the foregoing considerations, the Respondent has not been making any “fair” or “legitimate” use of the Domain Name, such as might provide him with a right or legitimate interest under paragraph 4(c)(iii) of the Policy. Nor has the Respondent provided any evidence to support a finding that he has a right or legitimate interest on some basis not described at paragraph 4(c) of the Policy.
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 [a respondent has] registered or … acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant … or to a competitor of the 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 [complainant] from reflecting the [complainant's] 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 a competitor; or
(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 on-line 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] web site or location.
The Complainant has also made out its case under this part of the Policy. The reasons are substantially as set out in section 6D of this Decision. The Panel is satisfied that the Respondent knew of the Complainant and its famous mark in 2008 when he registered the Domain Name, and the mark is (and was then) sufficiently famous that the Respondent could only have expected that he would attract to any website established at the Domain Name numerous Internet users looking for a website operated by the Complainant in the .me domain space.
The Panel accepts the Complainant's submission based on Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, that where a domain name is “so obviously connected with such a well-known name and products … its very use by someone with no connection with the products suggests opportunistic bad faith.”
Contrary to the Respondent's assertions, the Panel is satisfied that the Respondent offered the Domain Name for sale (along with numerous other domain names) on the batfind website, with a minimum starting bid of USD 2,000. The Panel has little doubt that the Respondent expected that the Complainant would eventually realize that a third party had registered its mark in the (potentially attractive) .me space, and would be concerned to recover the Domain Name if it possibly could. Its investigations were likely to take it to the Respondent, and then the negotiations could begin. It does not matter that the Respondent did not directly approach the Complainant with an offer to sell – the critical matter under paragraph 4(b)(i) of the Policy is whether, at the time of registration, the Respondent intended to attempt to sell the Domain Name (at a profit) to the Complainant or one of its competitors.
The fame of the FACEBOOK mark is such that the Panel sees no plausible alternative explanation for the Respondent's acquisition of the Domain Name – he could not have used the Domain Name to point to a trade website without falling foul of paragraph 4(b)(iv) of the Policy, as any such use would inevitably have misled numerous Internet users into believing that the website was operated by the Complainant. His explanation that he acquired the Domain Name (and other equally famous [trademark].me domain names) at considerable expense just to impress his friends is implausible, and in any event would not have required him to advertise the Domain Names for sale at a starting figure of USD 2,000. The Respondent may have paid a little over USD 5,000 for the Domain Name, but would no doubt have figured that it would be worth significantly more than that to the Complainant to acquire the Domain Name.
The Panel is satisfied that the Respondent's intention when he registered the Domain Name, was to transfer the Domain Name for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name, and that the Respondent knew and intended that the most likely buyer would be the Complainant. Those circumstances fall squarely within the category of bad faith registration and use described at paragraph 4(b)(i) of the Policy.
The Complainant has not made out its case under paragraph 4(b)(iii) of the Policy, because it has not proved that the Respondent is one of its competitors.
The fact that the Registrar was apparently permitted to use the Domain Name to derive pay-per-click advertising revenue is also caught by paragraph 4(b)(iv) of the Policy. The Respondent (a very experienced owner of domain names) has intentionally attempted to attract, for commercial gain Internet users to the website at the Domain Name, by creating a likelihood of confusion with the Complainant's FACEBOOK mark as to the source, sponsorship, affiliation, or endorsement of that website. The Respondent cannot deny responsibility for the way the Domain Name has been used – see Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267, MASAI S.A. v. Peter Colman, WIPO Case No. D2007-0509, and Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381, all followed by this Panel in NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079. Nor does it matter, for the purposes of paragraph 4(b)(iv), that the commercial gain required by that paragraph might not have been derived by the Respondent.
Finally, the Respondent's failure to reply to the Complainant's cease and desist email confirms the Panel's overall impression of bad faith registration and use.
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 <facebook.me> be transferred to the Complainant.
Dated: July 13, 2010
1 Although how the Respondent, who appears to be perfectly competent in English, could have misunderstood the words in Procedural Order No. 1: “The Panel is satisfied that the Center was correct in appointing a single member Panel, and sees no reason to recuse himself to permit the Center to appoint a three-member Panel”, is not clear. And in his Supplementary Response filed on July 5, the Respondent appears to have ignored the clear advice given to the parties on July 2, 2010, that “[t]he proceeding will continue as a single member panel proceeding”.