WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Andre Schneider / DomCollect AG
Case No. D2013-1183
1. The Parties
Complainant is Facebook, Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Andre Schneider / DomCollect AG of Zug, Switzerland.
2. The Domain Names and Registrar
The disputed domain names are<dominalaventaconfacebook.com>
which are registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 3 and 5, 2013, the Registrar transmitted by email to the Center its verification responses confirming that Respondent is listed as the registrant (except for the disputed domain names <imprimer-photo-facebook.com>, <print-facebook-photos.com> and <facebookvacation.com>) and providing the contact details. The Registrar also indicated on July 5, 2013 that the disputed domain names <imprimer-photo-facebook.com> and <print-facebook-photos.com> are “[t]oo late! No time left for restore_action” and the disputed domain name <facebookvacation.com> is “free”. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 15, 2013 in which Complainant expressly requested to remove from the Complaint the disputed domain names <imprimer-photo-facebook.com>, <print-facebook-photos.com> and <facebookvacation.com>.
The Center verified that the Complaint, together with amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2013.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on August 27, 2013. This Panel finds that it was properly constituted. This 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
Complainant is a company of the United States of America, with principal place of business at California, United States of America.
Complainant has rights over the FACEBOOK trademark for which it holds several trademark registrations, such as: registration No. 3041791 with the United States Patent and Trademark Office, classes 35 and 38, registration date January 10, 2006, application date February 24, 2005, and stated first use in commerce in February 2004; registration No. 550735 with the Swiss Federal Institute of Intellectual Property, classes 35, 38 and 42, registration date October 5, 2006, application date March 17, 2006; and registration No. 5722392 with the European Office of Harmonization in the Internal Market, classes 18, 25 and 28, registration date April 29, 2008, application date February 28, 2007.
Complainant is the registrant of the following domain names: <facebook.com>, <facebook.biz>, <facebook.asia> and <facebook.do>, among others.
The disputed domain names were created: <dominalaventaconfacebook.com> in July 2011, <facebookatemybaby.com> in May 2012, <facebookbuyingclub.com> in May 2011, <facebookconsultancy.net> in May 2010, <facebook-consulting.net> in May 2010, <facebooklikespage.com> in June 2011, <facebooklikespages.com> in June 2011, <facebook-marketing-service.info> in October 2010, <fäcebook.org> in May 2012, <facebookpararestaurantes.com> in October 2010, <facebooksafetyforteens.com> in November 2011, <facebooksafetypup.com> in November 2011, <facebooksafetypup.org> in November 2011, <facebook-site.org> in August 2012, <facebooktools.net> in September 2007, <hpukfacebook.com> in April 2011 and <myspace-facebook.com> in August 2010.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant is the world’s leading provider of online social networking services. Complainant’s services were first offered in February 2004 in relation to a social networking site at Harvard University, Cambridge, Massachusetts, United States of America. Access to the Facebook service was rapidly expanded to other universities and, in 2006, anyone with a valid email address could register as a Facebook user. The “www.facebook.com” website allows computer and Internet users to communicate with existing friends, make new friends, join and organize groups and events as well as share their personal profiles, statuses, activities, photos, links and videos.
Since it was founded in February 2004, Complainant has constantly grown and acquired notoriety. As of March 2013, Complainant provided authorised social networking services in more than 70 languages to over 1.11 billion monthly active users and 665 million daily users worldwide. The “www.facebook.com” website is ranked as the first most visited website in the world and has the second highest level of traffic in Switzerland, where Respondent is based.
The explosive popularity and consumer recognition of the Facebook name and website have made FACEBOOK one of the most famous online trademarks in the world. Given the exclusively online nature of Complainant’s social networking business, Complainant’s domain names consisting of the term Facebook are not only the heart of its entire business, but also the only way for its millions of users to avail themselves of its services. Reflecting its global reach, Complainant has owned, since 2004 and to date, over 150 domain names consisting of the term Facebook. Complainant has also registered almost 400 domain names that consist of the FACEBOOK trademark plus the addition of a generic or descriptive term.
Respondent initially registered over 100 domain names infringing Complainant’s rights. Complainant sent many emails to the administrative contact for these domain names. The administrative contact for the disputed domain names initially responded with a request of a payment of EUR 189 per domain name to transfer the domain names and then agreed to cancel all domain names within 48 hours. However, Respondent only cancelled a few of these domain names while others were either renewed or allowed to lapse when due for renewal.
Complainant conducted a preliminary search on Respondent and found that Respondent is also the registered owner of seven domain names that potentially infringe the rights of other brand owners, including Amazon.com, Inc. and Google Inc. In addition, two UDRP decisions were issued against Respondent, both of which resulted in transfer (Chevron Intellectual Property LLC v. Andre Schneider / DomCollect AG, NAF Case No. FA1446021 and General Assembly of the Council of God v. DomCollect Worldwide Intellectual Property AG c/o Andre Schneider, NAF Case No. FA1259727).
A search for “Andre Schneider / Domcollect” on the Internet brings back a number of complaints by individuals about the practices of the Registrar in relation to the registrant Andre Schneider / Domcollect. It would appear from these complaints that upon, or shortly before, the deletion date of domain names held with the Registrar, they are transferred directly to Respondent and certain complaints report that they are first put briefly up for auction listing inflated bids on “www.sedo.com” (another company operating a domain name auction website in which, according to its annual report available at the Internet, United Internet AG holds a 78.80% shareholding). This would seem to indicate a degree of collusion between the various entities involved, which ultimately deprives the original registrant of a domain name from being able to renew or re-register it should they allow it to lapse inadvertently or if it is cancelled due to administrative or some other error.
The disputed domain names were registered between September 2, 2007 and August 27, 2012, several years after Complainant started its activities.
As of June 28, 2013, six of the disputed domain names are in either a “pending delete” status or a “redemption period” status. The disputed domain names which are neither in a “pending delete” status nor a “redemption period” status point to web pages listing links for popular search topics. In addition, the web page at <fäcebook.org> (xn--fcebook-5wa.org) also advises that such disputed domain name is for sale and provides a link to “www,sedo.com”. The requested starting price for this disputed domain name is EUR 500.
Complainant has numerous FACEBOOK trademark registrations to protect its interests around the world.
The disputed domain names are identical or confusingly similar to the FACEBOOK trademark. The disputed domain names reflect the FACEBOOK trademark in its entirety. The disputed domain names differ from Complainant’s FACEBOOK trademark by the addition of generic terms; given that these terms are common or descriptive terms, such terms are insufficient to distinguish the disputed domain names from Complainant’s trademark. Thus, the dominant component of the disputed domain names is the FACEBOOK trademark.
Respondent has no rights or legitimate interests in the disputed domain names.
A preliminary search by Complainant has revealed that Respondent has no trademark rights in the term Facebook in Switzerland or the United States of America. Searches of the trademark registers in the following jurisdictions have also revealed no entries: Canada, Colombia, Mexico, Austria, Benelux, Czech Republic, Denmark, Finland, France, Germany, Hungary, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Monaco, Norway, Poland, Portugal, Slovak Republic, Spain, Sweden, United Kingdom of Great Britain and Northern Ireland, Australia, China, Japan and Republic of Korea.
Respondent is not an authorized dealer, distributor, or licensee of Complainant, nor has Respondent been otherwise allowed by Complainant to make any use of the FACEBOOK trademark.
Respondent is unable to rely on any of the circumstances set out in the Policy, paragraphs 4(c)(i), (ii), and (iii), in order to demonstrate its rights and legitimate interests in the disputed domain names.
Respondent cannot assert that its use of the disputed domain names is in connection with a bona fide offering of goods and services. The disputed domain names are being used to point to web pages listing links for popular search topics. The websites to which the disputed domain names point are used by Respondent as part of a revenue generating-scheme. There is no legitimate reason which could explain why the highly distinctive and renowned FACEBOOK trademark is being used by Respondent in connection with such activities except to take advantage of the significant goodwill in the term Facebook and mislead Internet users.
Respondent cannot assert that it is commonly known by the disputed domain names. To Complainant's knowledge, Respondent has no competing name or trademark rights in the disputed domain names.
The disputed domain names were registered and are being used in bad faith.
Respondent clearly acquired the disputed domain names with a view to earning money, either by selling them to Complainant or to a competitor of Complainant for an amount in excess of its out of pocket costs or by benefiting from a revenue generating-scheme. Indeed, Respondent initially offered to transfer all 101 domain names including the term Facebook it held at that time for EUR 189 per domain name thus a total of EUR 19,089. Whilst the practice of selling domain names in itself is not objectionable, it becomes so when the domain names in question are (or include) famous trademarks, especially when the priority dates of the trademarks in question pre-date the registration date of the domain names by a number of years, as in the case at hand. In addition, the websites to which the disputed domain names point allow Respondent to benefit from a revenue generating-scheme.
Respondent registered the disputed domain names in order to prevent Complainant from reflecting its trademark in the disputed domain names. Respondent anticipated that Complainant would be interested in owning the term Facebook in connection with all or part of the generic terms included in the disputed domain names and thus registered the disputed domain names to prevent Complainant from reflecting its activities in the disputed domain names.
The term Facebook is highly distinctive and well-known all around the world, including in Switzerland where Respondent is based, and it would therefore be inconceivable for Respondent to argue that it was unaware of Complainant and the FACEBOOK trademark at the time the disputed domain names were registered, especially as the FACEBOOK trademark rights significantly pre-date the registration of the disputed domain names and Respondent initially registered over 100 domain names including the term Facebook.
Respondent has engaged in a pattern of illegitimate registrations. A search carried out on Respondent has revealed that it has not only registered at least 100 domain names infringing the rights of Complainant but has also registered the following seven domain names that potentially infringe the rights of third parties: <amazine.co.uk>, <amazon-nms.org>, <brithishcouncil.org>, <burberrys.org>, <careaustralia.org>, <googlewimax.org> and <theguardian.org>.
The disputed domain names could not reasonably have been chosen for any reason other than seeking to benefit from the goodwill and reputation attached to the famous FACEBOOK trademark.
Respondent could not have been unaware of Complainant and its rights at the time of registration of the disputed domain names given the latter’s fame worldwide, including in Switzerland, and the fact that Complainant was obviously targeted by Respondent. This clearly evidences Respondent’s bad faith at the time of registration of the disputed domain names. Respondent registered the disputed domain names in bad faith in full knowledge of Complainant’s rights and that the only reason that it could possibly have done so was to seek to unjustly benefit from such rights and ultimately take advantage of Complainant.
By using the disputed domain names Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on Respondent’s website or location. Including the well-known FACEBOOK trademark in the disputed domain names would likely cause an Internet user to believe that they are somehow sponsored by, associated or affiliated with Complainant.
The offer for sale of the disputed domain names to Complainant reinforces this blatant bad faith and implies that Respondent intended to obtain financial gain by misappropriating the benefit of the extensive worldwide reputation that Complainant has established.
Complainant requests that the disputed domain names be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs 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 lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the FACEBOOK trademark.
Each disputed domain name incorporates the FACEBOOK trademark in its entirety, most of them adding either a prefix or a suffix. The addition of such characters is not enough to avoid similarity, nor does it add anything to avoid confusion with Complainant’s trademark, which appears to be the dominant element in the disputed domain names. Prior UDRP panel decisions support this Panel’s view (see Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102).
The diaeresis in <fäcebook.org> adds nothing distinctive and thus does not avoid a finding of confusing similarity with Complainant’s trademark. The fact that the disputed domain name <fäcebook.org> is really registered as <xn--fcebook-5wa.org> is not relevant since there are automated translation codes for non-ASCII characters, such as “ä”, when inserted in a domain name (see Württembergische Versicherung AG v. Emir Ulu, WIPO Case No. D2006-0278 and Sanutri AG v. Hello Domain, WIPO Case No. D2010-0554).
Therefore, this Panel finds that all disputed domain names are confusingly similar to Complainant’s FACEBOOK trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant asserts that it has not authorized Respondent to make any use of Complainant’s FACEBOOK trademark and that Respondent has no trademark rights in the term Facebook. Further, Complainant states that Respondent is not commonly known by the disputed domain names.
Most of the disputed domain names are being used to point to web pages listing links for search topics, apparently pay-per-click links. Complainant contends that the websites to which the disputed domain names point are used by Respondent as part of a revenue generating-scheme.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain names2. From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain names, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using disputed domain names which entirely incorporate Complainant’s FACEBOOK trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain names.
Thus, this Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant asserts that Respondent’s registration and use of the disputed domain names is in bad faith, which Respondent chose not to rebut.
The overall evidence in the file indicates that Respondent’s choice of the disputed domain names was deliberate with the apparent intention to somewhat benefit from the reputation and goodwill of Complainant’s trademark, which denotes bad faith. In this Panel’s view, the lack of response is also indicative that Respondent either has no interest in the disputed domain names or lacks arguments and evidence to support its holding of the disputed domain names.
Complainant has evidenced that its FACEBOOK trademark was registered in the United States of America in January 2006 (application of February 2005, and stated first use in commerce in February 2004) and in Switzerland in October 2006 (application of March 2006); that is, such trademark registrations pre-date the registration of all disputed domain names.
Taking into consideration that Complainant’s registration and use of the FACEBOOK trademark and the <facebook.com> domain name preceded the creation of the disputed domain names, Complainant’s Internet presence and its undisputed exponential growth since, at least, 2006, this Panel is of the view that Respondent should have been aware of the existence of Complainant’s trademark and website at the time Respondent registered each of the disputed domain names.
Additionally, there are several factors in this case that, in the aggregate, lead for a finding of bad faith in the registration and use of the disputed domain names3: (i) Complainant’s trademark is well-known worldwide; (ii) Complainant’s trademark was registered before the registration of the disputed domain names (and particularly in Switzerland, country where Respondent is domiciled as per the publicly available WhoIs report); (iii) Respondent is using Complainant’s trademark at the disputed domain names without Complainant’s authorization; (iv) Respondent’s registration of over 100 domain names which included Complainant’s trademark (17 of which are the subject matter of the Complaint); (v) Respondent’s request of EUR 189 per each of the disputed domain names to transfer them to Complainant; (vi) Respondent’s registration of other domain names that, on their face, might also infringe third parties’ rights (for instance, <amazine.co.uk>, <burberrys.org>, <googlewimax.org> and <theguardian.org>); (vii) two prior UDRP decisions against Respondent; and (viii) Respondent’s failure to appear at this proceeding.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain names,
be transferred to Complainant.
Date: September 10, 2013
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See INTOCAST AG V. LEE DAEYOON, WIPO Case No. D2000-1467: “[f]or methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
3 See Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598: “[a] second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s mark. Respondent registered the “nikesportstravel.com” and “niketravelcom” Domain Names on May 14, 1999, long after Nike registered the NIKE mark. Respondent had substantial constructive notice of the NIKE mark […].”; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith.”; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: “[t]he registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy.”