WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Lin Allien, Linyingying

Case No. D2016-0255

1. The Parties

The Complainant is Facebook, Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondents are Lin Allien of Guangzhou, Guangdong, China / Linyingying of Guangzhou, Guangdong, China.

2. The Domain Names and Registrars

The disputed domain name <facebooksz.com> is registered with Guangdong JinWanBang Technology Investment Co., Ltd.

The disputed domain name <facebookwatches.com> is registered with HiChina Zhicheng Technology Ltd.

Collectively the concerned registrars will be referred to as "the Registrars".

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2016. On February 11, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 14, 2016 and February 15, 2016, respectively, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details.

On February 15, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On February 15, 2016, the Complainant submitted its request that English be the language of the proceeding. The Respondents did not submit any comments within the specified due date.

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 and 4, the Center formally notified the Respondents of the Complaint in English and Chinese, and the proceeding commenced on February 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 16, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on March 24, 2016. 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

The Complainant, headquartered in California, the United States of America, is the world's leading provider of online social networking services. Founded in 2004, the Complainant today has more than 1.5 billion active users worldwide. In 2014, its revenues exceeded USD 12 billion. Its main website "www.facebook.com" is ranked amongst the top most visited websites in the world, and its social networking services are provided in more than 70 languages, including Chinese.

The Complainant is the owner of numerous trade mark registrations worldwide (including in China where the Respondents are based), for its well-known FACEBOOK mark, including the following:

- United States Trade Mark No. 3041791, registered on January 10, 2006 (first use in commerce in 2004);

- United States Trade Mark No. 3122052, registered on July 25, 2006 (first use in commerce in 2004);

- Chinese Trade Mark No. 5251162, registered on September 21, 2009;

- Chinese Trade Mark No. 6389501, registered on March 28, 2010;

- Community Trade Mark No. 004535381, registered on June 22, 2011; and

- International Trade Mark No. 1075094 (designating China), registered on July 16, 2010.

The Complainant also owns numerous domain name registrations incorporating the FACEBOOK trade mark including <facebook.com>, <facebook.org>, <facebook.net>, <facebook.biz> and <facebook.cn>.

The disputed domain names <facebooksz.com> and <facebookwatches.com> were registered on March 26, 2013 and May 20, 2011, respectively, long after the Complainant had used and registered its trade mark FACEBOOK (in 2004). As at the date of this decision, neither disputed domain name resolves to an active website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the term "Facebook" is exclusively associated with the Complainant and that all search results obtained by typing the term "Facebook" in the search engines available at "www.google.com" or "www.baidu.com" (the most used search engine in China) refer to the Complainant.

The Complainant furnished evidence to show that the disputed domain name <facebooksz.com> previously redirected Internet users to a website in both Chinese and English prominently displaying the name "Maraserti Milano" and offering watches for sale, while the disputed domain name <facebookwatches.com> was inactive and did not resolve to any website.

The Complainant claims that the disputed domain names are identical or confusingly similar to its trade mark FACEBOOK. The disputed domain names only differ from the Complainant's trade mark by the addition of the acronym "sz" (which presumably stands for Shenzhen, a Chinese city in Guangdong Province) and the generic term "watches" respectively.

The Complainant affirms that the Complainant has not licensed or otherwise authorized the Respondents to use its trade mark or to apply for any domain name incorporating the FACEBOOK trade mark. It asserts that the Respondents are unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain names. The Complainant also asserts that the Respondents appear to be using the company name and trade name "Facebook Time Limited" to offer watches for sale. That, the Complainant contends, is clearly illegitimate (especially since the said company appears to have been incorporated in 2011) and cannot give rise to rights or legitimate interests in the disputed domain names. By offering watches for sale on the website "www.facebooksz.com", the Respondents were seeking to exploit the Complainant's goodwill for financial gain, and that, the Complainant contends, is not a legitimate noncommercial or fair use.

The Complainant contends that its FACEBOOK trade mark is highly distinctive and famous throughout the world and has rapidly acquired considerable goodwill and renown worldwide, including in China, since 2004. The Complainant argues that it will be inconceivable for the Respondents to claim that they did not have knowledge of the Complainant's FACEBOOK mark at the time of registration of the disputed domain names (in 2011 and 2013 respectively). The Complainant further submits that although access to the Facebook website was blocked in China (the country of residence of the Respondents) in 2009, the Respondents were clearly aware of the existence of the Complainant and its rights at the time of registration of the disputed domain names, particularly as the blocking was highly publicized and obtained wide media coverage by the international and Chinese press. The Complainant argues that the Respondents are using the disputed domain names to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of their websites. This would result in misleading diversion and taking unfair advantage of the Complainant's rights. The Complainant therefore claims that the Respondents registered and are using the disputed domain names in bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Preliminary Issues

A. Filing a Complaint against Multiple Respondents

The Complainant has submitted a request to have the Complaint filed against multiple respondents. Although neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents, the issue has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.

In order to file a single complaint against multiple respondents, the complaint must meet the following criteria:

(i) the domain names or the websites to which they resolve are subject to common control; and

(ii) the consolidation would be fair and equitable to all parties.

The Panel finds, firstly, that the evidence provided by the Complainant (including that both registrants use almost identical email addresses and the same phone number) indicates that the disputed domain names are subject to common control, and secondly, taking into consideration that the Complainant's substantive arguments against both Respondents are the same and the dispute involves only two domain names, the consolidation would be fair and equitable to all parties. Thus, in these circumstances the Panel accepts the Complaint against multiple Respondents.

B. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and each of the Respondents regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that each of the Respondents (assuming they are different individuals) have sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names <facebooksz.com> and <facebookwatches.com> are registered in Latin characters, rather than Chinese script;

(b) according to the evidence submitted by the Complainant, the website to which the disputed domain name <facebooksz.com> resolved was available in English; and

(c) the disputed domain name <facebookwatches.com> comprises the Complainant's trade mark FACEBOOK and the English word "watches".

Additionally, the Panel notes that:

(a) the Center has notified the Respondents of the proceeding in both Chinese and English;

(b) the Respondents have been given the opportunity to present their case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the FACEBOOK mark by virtue of its use and registration of the same as a trade mark.

The disputed domain names incorporate the Complainant's trade mark FACEBOOK in its entirety, as a dominant element. The addition of the letters "sz" and the generic English word "watches" respectively, being non-significant elements, does not sufficiently differentiate the disputed domain names from the Complainant's trade mark. The addition of the generic Top Level Domain ("gTLD") ".com" does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant's trade mark.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondents lack rights or legitimate interests in the disputed domain names. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondents to establish their rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to them of the dispute, the Respondents' use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents have been commonly known by the disputed domain names, even if they have acquired no trade mark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).

The Complainant has clearly established that the Respondents are not in any way affiliated with the Complainant or otherwise authorized or licensed to use the FACEBOOK trade mark or register the disputed domain names. There is also no evidence suggesting that the Respondents are commonly known by the disputed domain names or that the Respondents have any rights in the term "facebook".

The Panel is satisfied that the Complainant has made out a prima facie caseshowing that the Respondents lack rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondents to establish their rights or legitimate interests in the disputed domain names.

As at the date of the decision, the disputed domain names do not resolve to any active website. The Respondents have failed to provide any evidence to establish their rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:

(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondents' documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding domain names, provided that the Respondents have engaged in a pattern of such conduct; or

(iii) the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents' websites 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 Respondents' websites or location or of a product or service on the Respondents' websites or location.

The Panel notes that, as of the date of this decision, the disputed domain names do not resolve to any active websites. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview 2.0, paragraph 3.2).

The Complainant and its trade mark FACEBOOK enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the FACEBOOK trade mark and its extensive use by the Complainant. The Panel agrees with the Complainant's assertion that although access to the Facebook website was blocked in China, there was wide media coverage and publicity by international and China press. Thus a presumption arises that the Respondents were aware of the Complainant's FACEBOOK trade marks and related domain names when they registered the disputed domain names. Registration of a domain name that incorporates a complainant's long-established and well known trade mark suggests opportunistic bad faith.

The Respondents have failed to provide any evidence of actual or contemplated bona fide use of the disputed domain names. In view of the above finding that the Respondents do not have rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondents intend to take advantage of the fame of the Complainant's trade mark to attract, for commercial gain, Internet users to the Respondents' websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondents' websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Panel also notes that efforts by the Center to contact the Respondents at the email addresses and physical addresses provided to the Registrar failed which suggests that the Respondents have provided false contact details.

Taking into account all the circumstances, it is appropriate to conclude that the Respondents have registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <facebooksz.com> and <facebookwatches.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: April 10, 2016