WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Ông Trần Huỳnh Lâm
Case No. D2016-0771
1. The Parties
The Complainant is Facebook, Inc. of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Ông Trần Huỳnh Lâm of Viet Nam, self-represented.
2. The Domain Name and Registrar
The disputed domain name <facebook360.com> is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 19, 2016. On April 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 2016.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Vietnamese. On April 26, 2016, the Center sent a language of proceeding communication in both Vietnamese and English to the parties. On the same date, the Complainant submitted a request for English to be the language of proceeding. The Respondent replied to the language of proceedings communications and the Complainant's request on April 27, 2016.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint in both English and Vietnamese, and the proceedings commenced on May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. The Respondent did not submit any response to the Center. Accordingly, the Center notified Respondent's default on May 25, 2016. The Respondent filed the Response in the English language with the Center on May 28, 2016.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 1, 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, Facebook Inc., is the world's leading provider of online social networking services. Founded in 2004 Facebook allows Internet users to stay connected with friends and family, and to share information mainly via its website available at "www.facebook.com". Access to Facebook was originally restricted to students at Harvard University but quickly expanded to other universities and in 2006 to anyone in the world with a valid email address. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide with one million active users by the end of 2004 and an estimated one billion users worldwide by September 2012.
Today Facebook has more than 1.59 billion monthly active users and 1.04 billion daily active users on average worldwide (as of December 2015), including over 30 million monthly active users in Viet Nam where the Respondent is based. The Complainant's main website "www.facebook.com" is currently ranked as the third most visited website in Viet Nam and the second most visited website in the world, according to the information company Alexa.
Facebook has developed a considerable reputation and goodwill worldwide for its services and brands. Its trademark FACEBOOK is currently one of the most famous online trademarks in the world. In 2015 the FACEBOOK brand ranked 23 in Interbrand's Best Global Brands Report.
On September 23, 2015, the Complainant officially announced that it was introducing 360-degree videos on its Facebook platform allowing users to upload and watch videos from all 360-degree angles. At Annex 6 to the Complaint is a copy of Facebook's press release entitled "Introducing 360 video on Facebook" regarding 360-degree videos and also press articles from major online sources. 360-degree videos are created with a special camera system that records all 360-degrees of a scene simultaneously, using a technology called cube-mapping. These 360-degree videos may be uploaded to a Facebook user's timeline and have a 360‑video label in the lower left hand corner. These videos may be accessed by viewers using Facebook on the web or via mobile devices. The Complainant's official "Facebook 360" website is available at "https//facebook360.fb.com" and can be seen at Annex 4 to the Complaint.
Given the exclusive online nature of the Complainant's social networking business, the Complainant's domain names consisting of the trademark FACEBOOK are not only at the heart of its entire business but also the main way for millions of users to avail themselves of its services. Reflecting its global reach, Facebook is the owner of numerous domain names consisting of or including the trademark FACEBOOK for instance <facebook.com>, <facebooklive.com>, <facebook.org>, <facebook.net> and <facebook.biz> as well as country extensions such as <facebook.vn> (Viet Nam), <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.us> (United States) and so forth. At Annex 7 to the Complaint are copies of the WhoIs records of the Complainant's domain names.
The Complainant points out that the reputation of its trademarks is "ironically", evidenced by the number of cyber squatters who have sought to unfairly and illegally exploit the very significant consumer recognition and goodwill attached to its trademark". Prior domain name dispute panels have recognised the strength and renown of the Complainant's trademark, and have ordered infringing respondents to transfer the disputed domain names to the Complainant. Nine of these decisions are referred to in the Complaint and at Annex 9 are exhibited copies of decisions involving the Complainant's trademark.
In addition to its strong presence online the Complainant has secured ownership of numerous trademark registrations for the mark FACEBOOK in many jurisdictions throughout the world including in Viet Nam. These include but are not limited to the following:
United States trademark number 3041791 FACEBOOK registered on January 10, 2006.
United States trademark number 3122052 FACEBOOK registered on July 25, 2006.
Vietnamese trademark number 128158 FACEBOOK registered on June 26, 2009.
International trademark number 1075094 Facebook (in logo form) registered on July 16, 2010 designating Viet Nam.
International trademark number 1232015 FACEBOOK registered on December 15, 2014 designating Viet Nam.
Copies of these trademark registrations are annexed at Annex 14 to the Complaint.
The history of this dispute is set out in the Complaint. The disputed domain name was registered on October 26, 2015. The disputed domain name consists of the mark FACEBOOK in conjunction with a number "360" under the ".com" generic Top-Level Domain ("gTLD").
It appears that the Respondent is a privacy protection service and that a third party based in Viet Nam is in fact behind the registration of the domain name. A historical WhoIs record of the domain name shows that it was originally registered to an individual based in Viet Nam, Mr [ ] who has subsequently been corresponding with the Complainant.
The present position is that the disputed domain name is currently not resolving. However screen captures from the Internet archive available at "www.archive.org" show that in January 2016 the disputed domain name was resolved into the website "http//360facebook.blogspot.com>" which is still available and displays an image of the earth and invites users to log in using their Facebook account. The website also displays on the top left hand corner the Complainant's FACEBOOK logo with the addition of an exclamation mark and the number "360". Upon clicking on the image Internet users are invited to send an email to "email@example.com".
On February 25, 2016 the Complainant's legal department contacted the Respondent asserting its trademark rights in the term FACEBOOK and asking the Respondent inter alia to transfer the domain name to the Complainant. In reply, on February 26, 2016, the Respondent stated that he was not convinced that his registration of the disputed domain name was infringing Facebook's rights as the disputed domain name was available when he registered it and the Registrar had accepted his domain name registration. He explained that he was planning to build a social networking website for sharing 360‑degree videos and that he was anticipating that his project was worth billions of USD. The Respondent however expressed that he was willing to transfer the disputed domain name to the Complainant as long as it would grant him two "favours". First to meet Facebook's founder and CEO Mark Zuckerberg in Viet Nam and secondly to reimburse his fees in addition to a "goodwill payment".
On March 17, 2016 the Complainant's lawyers sent a cease and desist letter to the Respondent by email and by registered post asserting yet again its trademark rights in the mark FACEBOOK and asking the Respondent inter alia to transfer the disputed domain name to the Complainant at no cost. On March 25, 2016 the Complainant's lawyers followed up the demand by email and on the same day the Respondent replied by email stating that he had not received the first email. The Respondent asked the Complainant's lawyers for clarification and a number of legal questions and made reference again to the aforementioned "favours" which the Respondent had requested.
The Complainant's lawyers answered the questions raised by the Respondent and also stated that the Complainant was prepared to refund the Respondent's registration and renewal expenses but it was not possible to arrange for a meeting with Mr Zuckerberg. The Complainant's lawyers explained that they wished to settle the matter amicably and quickly failing which the Complainant would have no choice but to file a complaint under the Policy.
On March 27, 2016, the Respondent responded that he had given some thought to the matter and explained that in the past Yahoo!360 was famous in Viet Nam and he intended to do the same with Facebook!360. He also claimed that he had spent money not only on the registration of the disputed domain name but also on developing his project which he claimed to have been working on since October 2015. He asserted that his operating expenses amounted to thousands of USD (including facilities, computer equipment, furniture and outsourcing of website design) and requested to be reimbursed a total of USD 100,000.
On March 29, 2016, the Complainant's lawyers responded to the Respondent's email and invited the Respondent to consult a lawyer to obtain advice regarding the matter. They gave the Respondent 48 hours to comply, failing which they would file a complaint under the Policy. The Respondent replied that registration renewal costs of USD 100 were nothing for him and that he was also planning to open a virtual reality coffee shop at an R&D lab of VR360-degree technology in Viet Nam in connection with the disputed domain name. The Complainant's lawyers reaffirmed their position on March 30, 2016 and stressed that the Respondent's activities would constitute trademark infringement. The Respondent did not reply.
A copy of the correspondence between the Complainant's lawyers and the Respondent including the cease and desist letter of March 17, 2016, is set out at Annex 13 to the Complaint.
The Respondent in his response does not dissent from the factual account set out above. The Respondent does however point out that he contacted Facebook's legal department and Facebook's lawyer to agree to transfer the disputed domain name on May 7, 2016 at no cost and no reimbursing payment prior to appointment of the Panel. He asserts that the Complainant simply rejected to receive and accept transfer of the disputed domain name prior to appointment of the Panel. The Respondent asserts that this is evidence of Reverse Domain Name Hijacking.
5. Parties' Contentions
1. The Complainant submits that it has trademark rights in the mark FACEBOOK and that the disputed domain name is confusingly similar to the trademark FACEBOOK in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name. In particular the Respondent has not been authorised by the Complainant to make any use of the trademark FACEBOOK in a domain name or otherwise.
3. The disputed domain name was registered and is being used in bad faith. Given the Complainant's renown and goodwill worldwide in the trademark FACEBOOK it would be "inconceivable" for the Respondent to argue that it did not have knowledge of the Complainant's rights.
1. The Respondent appears to submit that the disputed domain name is not confusingly similar to the trademark FACEBOOK.
2. The Respondent has rights or legitimate interests in respect of the disputed domain name. The use of the disputed domain name by the Respondent does not constitute trademark use.
3. The Respondent has not registered nor is using the disputed domain name in bad faith because it is making a legitimate noncommercial or fair use of the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has adduced evidence of trademark rights in the United States and in Viet Nam which predate the date of the filing of the disputed domain name. The Complainant therefore has established rights in the mark FACEBOOK. This does not appear to be contested in the Response.
The Complainant goes on to submit that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. It argues that the disputed domain name incorporates the Complainant's trademark FACEBOOK in its entirety. It differs only from the trademark FACEBOOK by the addition of the number 360. It submits, which in the Panel's view is well-established, that the TLD ".com" is immaterial when assessing whether a domain name is identical or confusingly similar to a complainant's trademark.
The Respondent appears simply to assert that the disputed domain name is not confusingly similar to <facebook.com> that "both <facebook360.com> and <facebook.com> are domain names not trademark or brand-name". It accepts that the Complainant owns the registered trademark FACEBOOK but then asserts that "no one can say that Facebook!360 is 'Facebook'". In the Panel's view the argument maintained by the Respondent cannot succeed.
In the Panel's view the Complainant has established that the disputed domain name <facebook360.com> is confusingly similar to the Complainant's trademark FACEBOOK.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, in particular there is no evidence that the Respondent has been authorised by the Complainant to make any use of the trademark FACEBOOK. There is no evidence that the Respondent is using or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Moreover there is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the disputed 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. To the contrary the Respondent has declared his intention to use the disputed domain name for a social networking website for sharing 360-degree videos. Evidence from the Internet archive shows that he was previously using the disputed domain name for such purposes. The Complainant submits that such use cannot be considered either legitimate, noncommercial or fair as the Respondent was clearly seeking to unfairly exploit the Complainant's goodwill and reputation for his own financial gain.
Moreover, given the "renown and explosive popularity" of the Complainant's trademark worldwide and the nature of the domain name itself it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would be legitimate.
In response the Respondent submits that it has rights or legitimate interests in the disputed domain name. It appears to argue that although the Complainant owns the trademark rights it does not own an equivalent domain name so that if the Complainant wishes to use the trademark as part of the domain name (such as the disputed domain name) it must purchase the domain name registration from an ICANN accredited registrar. According to the Respondent, the Complainant did not do so and therefore has no rights in the disputed domain name.
In the Panel's view this constitutes a misunderstanding of the basis of the Policy and in particular paragraph 4(a)(ii). The basis of the Policy in the Panel's view is that the Complainant's rights stem from ownership of a pre-existing trademark rather than a pre-existing domain name.
Accordingly the Panel finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Complainant relies upon the fact that the trademark FACEBOOK is highly distinctive and famous throughout the world and has been continuously and extensively used since 2004, having rapidly acquired considerable goodwill and renown worldwide including in Viet Nam. Therefore it would be inconceivable for the Respondent to maintain an argument that he did not have knowledge of the Complainant's trademark FACEBOOK. This in itself would constitute evidence of bad faith.
The Complainant also relies upon the timing of the registration of the domain name by the Respondent which took place only one month after Facebook announced in a press release that it was introducing 360-degree videos. It therefore submits that the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark rights and commercial intentions.
It also submits that the Respondent's offer to transfer the disputed domain name in return for a payment of USD 100,000 is a "strong indication" of the Respondent's intention to unduly profit from the Complainant's rights and constitutes additional evidence of bad faith.
The Complainant's evidence is that the disputed domain name is no longer resolving to the website but this is still evidence of bad faith particularly in the light of the Respondent's declared intention to use the disputed domain name for a social networking website for sharing 360-degree videos.
Finally the Complainant submits that the Respondent's decision to break off negotiations with the Complainant, despite the Complainant's offer to reimburse the Respondent his out of pocket expenses, is an additional indication of the Respondent's bad faith and demonstrates that he had no real intention of transferring the disputed domain name to the Complainant without payment in excess of his out of pocket costs.
The Respondent admits that it is intending and planning to use the disputed domain name in connection with sharing 360-degree videos for free to all Internet users. It submits that this is not bad faith because the Respondent is making legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was registered "primarily for the noncommercial purpose of building a platform for sharing 360-degree videos for free to all Internet users" and submits that this is not evidence of bad faith.
In the Panel's view the Complainant has submitted ample evidence of registration and use of the disputed domain name in bad faith.
The Panel does not accept the Respondent's arguments that it is not using the disputed domain name commercially and that it has a legitimate, noncommercial use which constitutes fair use. This evidence is to the contrary. In the Panel's view this argument does not defeat the Complainant's evidence of bad faith use.
D. Reverse Domain Name Hijacking
Given the Panel's findings in favour of the Complainant the Panel does not consider that the use of the alleged "legitimate non-commercial use" or "fair use" of the disputed domain name by the Respondent enables it to make a finding of reverse domain name hijacking.
Additionally the Panel does not consider that the Respondent contacting Facebook on May 7, 2016 apparently agreeing to transfer the disputed domain name at no cost and with no reimbursing payment prior to the appointment of the Panel would also justify a finding of reverse domain name hijacking.
In summary the Panel does not find reverse domain name hijacking.
For the foregoing reasons in accordance with paragraph 4(1) of the Policy and 15 of the Rules, the Panel orders the disputed domain name <facebook360.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: June 14, 2016