WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Naija Host
Case No. D2015-1057
1. The Parties
Complainant is Facebook Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Naija Host of Silver Springs, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <facebookghana.com> (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 19, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 22, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 3, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a leading provider of online social networking services. Founded in 2004, Complainant allows Internet users to stay connected with friends and family, and to share information via its website at "www.facebook.com".
Since its launch in 2004, Complainant has developed a huge following, with 1 billion users worldwide by September 2012. In 2014 Facebook reached 100 million users in Africa, with over 80% accessing its website via a mobile device. The number of Facebook users in Ghana has also experienced growth, with over 100,000 users in 2009, 621,000 users in August 2010 and over 1 million users by October 2011. Today, Complainant has more than 1.44 billion active users and almost 890 million daily active users worldwide, including over 2.8 million users in Ghana.
Complainant's main website at "www.facebook.com" is currently ranked as the 2nd most visited website in the world and in the United States, according to web information company Alexa. Facebook is also the most visited website in Ghana. With approximately 82.8 percent of its daily active users outside the United States and Canada, Complainant's social networking services are provided in more than 70 languages. In addition, Facebook is available for mobile devices and has 1.25 billion mobile monthly active users and 798 million mobile daily active users.
Complainant has developed reputation and goodwill worldwide, including in Africa, for its FACEBOOK trademark, which is one of the most famous online trademarks in the world. In 2014 the FACEBOOK brand ranked 29 (up from 52 in 2013) in Interbrand's Best Global Brands report, and was selected "top riser" for a second year in a row.
Complainant has made investments to develop a strong presence online by being active on social media. Complainant's official page on Facebook has over 164 million "likes". In addition, Facebook has over 13.9 million followers on Twitter.
Complainant owns numerous trademark registrations for the term FACEBOOK in jurisdictions around the world, including in Ghana and in the United States, where Respondent appears to be based. Several of these trademarks are listed below:
− United States Trademark Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004);
− United States Trademark Registration No. 3122052, FACEBOOK, registered on July 25, 2006 (first use in commerce in 2004);
− Community Trademark Registration No. 004535381, FACEBOOK, registered on June 22, 2011;
− International Trademark Registration No. 1075094, FACEBOOK, designating Ghana, registered on July 16, 2010 (in effect in Ghana under Rule 5 of the Madrid Protocol); and
− International Trademark Registration No. 1075807, FACEBOOK, designating Ghana, registered on July 16, 2010 (in effect in Ghana under Rule 5 of the Madrid Protocol).
Complainant is also the owner of numerous domain names with the term FACEBOOK, including: <facebook.com>, <facebook.org>, <facebook.net> and <facebook.biz>, as well as under country extensions such as <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cn> (China), <facebook.com.cm> (Cameroon), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.com.gr> (Greece), <facebook.hu> (Hungary), <facebook.in> (India), <facebook.it> (Italy), <facebook.pk> (Pakistan), <facebook.rw> (Rwanda), <facebook.co.za> (South Africa), <facebook.es> (Spain), <facebook.com.tr> (Turkey), <facebook.ua> (Ukraine) and <facebook.us> (United States).
The Domain Name was registered on January 24, 2011. The website linked to the Domain Name points to a social networking website called "Ghana Nation", available at "www.ghananation.com". The webpages on this site include commercial banners for the sale of computers, mobile devices, car rentals and other items. The "About us" section of the site provides as follows:
"The website, GhanaNation™ (GN™) was founded in 2006 with one specific objective in mind: to deliver the very best of content targeted at Ghanaian in diaspora, specifically in North America. We provide honest, compelling, timely information that offers insight and information designed to engage and excite our users. Our ultimate objective been [sic] to provide content that of value to users daily. We are the largest Ghanaian website with over 85,000 registered and active members online".
Users are invited on the pages to which the Domain Name is linked to "like" the page "Ghana Nation" available on Facebook at "www.facebook.com/ghananation", which refers to Respondent's website as Ghana's "largest social network".
On March 26, 2015, Complainant sent a letter by email to Respondent asserting its trademark rights and requesting that Respondent transfer the Domain Name to Complainant. On the same day, Respondent replied by email stating that "I bought the domain name fair and square. I have nothing on the website that misrepresents or confuses users. Please refrain from these threats via email. If you want the domain, the least you could do is refund me the cost of the domain name. Outside that, please go ahead and file whatever case you have. Thanks". On that same day, Complainant then replied to Respondent and stated that it had a policy against reimbursing expenses incurred for infringing domain name registrations and invited Respondent to consult an intellectual property attorney. Further on that same day, Respondent then replied as follows: "I did consult with my attorney and my domain name does not infringe on your trademark name. I never asked you for reimbursement as that would mean I purchased it on your behalf. I did not. I bought the domain name because it was available and complied with my domain registrar's guidelines. Now, if you think it affects your business, you have several choices, buy it from me to avert whatever ill effects you claim my domain name does to your business, wait for it to expire and hope I don't renew it or simply go to court and have it resolved. Perhaps they will rule in your favor. Either way, don't push rules that you wrote for me to comply with and stop making threats".
5. Parties' Contentions
Complainant contends that given the blatantly abusive registration and use of the Domain Name, and Respondent's unwillingness to cooperate, Complainant had no choice but to file the present Complaint in order to request the transfer of the Domain Name under the Policy to protect its business interests and rights, and to protect consumers from confusion.
Complainant urges that its reputation offline and online is not only crucial to maintain the value and distinctiveness of its brand, but also vital to the success, integrity and protection of its business and customers. Accordingly, Complainant devotes significant resources to protect its trademark rights and goodwill in fora such as this UDRP proceeding.
(i) Identical or Confusingly Similar
Complainant submits that the Domain Name is identical or confusingly similar to a trademark in which it has rights. The Domain Name incorporates Complainant's FACEBOOK mark in its entirety, and differs only by the addition of the country name "Ghana". Complainant urges that prior UDRP panels have held that the addition of a country name, such as Ghana, is insufficient to distinguish a domain name from a complainant's trademark. Complainant states that the addition of the country name "Ghana" increases the confusing similarity with Complainant's trademark as Internet users are likely to believe that the Domain Name points to Complainant's official website for users in Ghana.
(ii) Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name, and is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests.
Complainant states that Respondent is not a licensee of Complainant, nor has Respondent been allowed by Complainant to make use of its FACEBOOK trademark in a domain name or otherwise. Moreover, Complainant states that Respondent cannot assert it is using, or has 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 Policy. Given that the Domain Name identically reproduces Complainant's trademark, any offering of goods or services at a website associated with the Domain Name could not be bona fide, as the Domain Name is creating a false association with Complainant. Furthermore, Respondent is using the Domain Name to point to a social networking website, and is thus offering identical or similar services to those offered by Complainant. Complainant argues that prior UDRP panels have held that where a respondent operates a website using a domain name that is confusingly similar to a complainant's trademark and for the same type of business activity, there cannot be a bona fide offering of goods or services.
Complainant also contends that Respondent cannot claim it is commonly known by Complainant's trademark, given Complainant's notoriety and the fact that the term FACEBOOK is exclusively associated with Complainant. Neither can Respondent assert that it has made or is currently 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, pursuant to paragraph 4(c)(iii) of the Policy. The Domain Name is pointing to a website that promotes services competing with Complainant's services, and that website is loaded with commercial banners from which Respondent is undoubtedly obtaining financial gain. Therefore, Complainant argues that Respondent is not using the Domain Name in a fair manner, but rather unfairly exploiting Complainant's goodwill and reputation in order to increase traffic to its website and thus its revenues.
Finally, Complainant claims that given the popularity of its FACEBOOK trademark worldwide, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate, as it would inevitably result in misleading diversion.
(iii) Registered and Used in Bad Faith
Complainant asserts that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Complainant submits that Policy paragraph 4(b)(iv) is of particular relevance in this case, although there are other factors not listed in Policy paragraph 4(b) that also indicate bad faith.
Complainant maintains that since its launch in 2004, its FACEBOOK trademark has acquired goodwill and renown worldwide, including in the United States where Respondent appears to be based. Complainant's social networking service was well-known not only in the United States, but also in Africa, including in Ghana, by the time Respondent registered the Domain Name in 2011. Complainant claims that given its renown and goodwill worldwide, it would be inconceivable for Respondent to argue that it did not have knowledge of Complainant's FACEBOOK trademark at the time of registration of the Domain Name on January 24, 2011, particularly as at that time Complainant's social networking service had already acquired over 500 million users worldwide and was experiencing rapid growth and popularity throughout the African continent. Complainant highlights that prior panels deciding under the Policy have acknowledged that it is highly unlikely that a respondent would not have had awareness of Complainant's FACEBOOK trademark, given the nature of the Internet and Complainant's popularity worldwide.
Complainant therefore submits that Respondent registered the Domain Name in full knowledge of Complainant's rights, which is further demonstrated by Respondent's subsequent use of the Domain Name to point to a website offering identical or similar services to those offered by Complainant. Prior UDRP panels have held that actual and constructive knowledge of a complainant's rights at the time of registration of a domain name constitutes evidence of bad faith. Further, given Complainant's goodwill and renown worldwide, the Domain Name could not have been chosen by Respondent for any reason other than to capitalize on Complainant's goodwill and reputation, in order to increase the number of members of its own social network and therefore its revenues.
Complainant maintains that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy. Complainant contends that Respondent is aware that Internet users are likely to expect to find a site that is affiliated to or sponsored by Complainant. There is no reason that could explain why Complainant's well-known trademark is being used by Respondent in the Domain Name, other than to mislead Internet users searching for Complainant's official website for Ghanaian users and divert them to Respondent's site. The fact that Respondent is using the Domain Name to point to a website offering identical or similar services to those offered by Complainant is further evidence that Respondent is deliberately seeking to cause confusion among Internet users to attract traffic to its own site and benefit from the goodwill attached to Complainant's trademark.
Furthermore, there are no disclaimers or any other indication on the website linked to the Domain Name that Respondent wishes to distinguish or separate its services from those of Complainant. This constitutes additional evidence of bad faith. However, Complainant submits that even if a disclaimer was displayed, it would be insufficient to remove the confusion with Complainant's FACEBOOK trademark.
Complainant argues that Respondent's use of the Domain Name is in bad faith not only because Respondent is seeking to unduly profit from Complainant's reputation and goodwill, but also because it is damaging Complainant's reputation and goodwill as Complainant has no control over the content appearing on the website or the policies governing Respondent's social network and so Internet users are likely to believe that the content and/or policies are either approved or sponsored by Complainant when in fact they are not.
Complainant states that Respondent's offer to sell the Domain Name to Complainant in order to "avert whatever ill effects [Complainant] claims [its] domain name does to [Complainant's] business" is also evidence of Respondent's bad faith, as it is an indication of Respondent's awareness of the damage caused by the use of the Domain Name but also of Respondent's intention to profit from the Domain Name itself, by seeking to sell it to Complainant. Finally, given the popularity of Complainant's FACEBOOK trademark worldwide, not only in the United States but in Africa, Complainant urges there cannot be any actual or contemplated good faith use of the Domain Name by Respondent as it would inevitably result in misleading diversion.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant owns registered trademark rights in its FACEBOOK marks by virtue of the trademark registrations listed in section 4 above. Complainant has also submitted evidence to support that its FACEBOOK mark is well-known both in the United States and in Ghana. Further, the Panel concludes that the Domain Name is confusingly similar to the Complainant's FACEBOOK mark. The Domain Name contains the FACEBOOK mark in its entirety, along with the country name, "Ghana". The inclusion of the country name serves only to reinforce confusing similarity, rather than distinguish the Domain Name. In particular, the well-known FACEBOOK mark is associated with social networking services and users viewing the Domain Name might easily be confused that it is meant to link to Complainant's services directed toward users in Ghana.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's FACEBOOK mark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that 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 respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. Complainant has demonstrated rights in its well-known FACEBOOK trademark, which pre-date Respondent's registration of the Domain Name. Complainant has not given Respondent permission to use the FACEBOOK mark in the Domain Name. Further, the Panel finds, on the balance of the probabilities, that Respondent was likely aware of Complainant and its FACEBOOK mark when it registered the Domain Name and used it for its own social networking site in a competing business. It thus appears that Respondent targeted Complainant and its trademark. Such use, taking advantage of Complainant's well-known mark to attract users to Respondent's own site (for which Respondent also appears to hold a separate domain name registration, <ghananation.com>), does not give rise to any rights or legitimate interests on the part of Respondent in the Domain Name. See America Online, Inc. v. Xianfeng Fu, WIPO Case No. 2000-1374 (holding that it would be "unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
Respondent did not respond to Complainant's prima facie showing. Accordingly, Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. The Panel determines that the Domain Name was registered and is being used in bad faith.
In line with the analysis above for the second element, the Panel concludes that Respondent targeted Complainant and its FACEBOOK mark when it registered the Domain Name. See Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004 ("In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its FACEBOOK trademark, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name").
The Panel finds that the Domain Name could not have been chosen by Respondent for any reason other than to capitalize on the goodwill and reputation of Complainant's FACEBOOK mark, misleading Internet users searching for Complainant's official website for Ghanaian users and diverting them to Respondent's own site. The fact that Respondent is using the Domain Name to point to a website offering similar services to those offered by Complainant is further evidence that Respondent is deliberately seeking to cause confusion among Internet users.
The Panel finds that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <facebookghana.com>, be transferred to Complainant.
Christopher S. Gibson
Date: August 14, 2015