WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Tom Burch, Burch Trading Group
Case No. D2017-1696
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 Tom Burch, Burch Trading Group of Wilmington, North Carolina, United States, internally-represented.
2. The Domain Name and Registrar
The disputed domain name <pokerfacebook.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2017. On September 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2017, 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.
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 Respondent of the Complaint, and the proceedings commenced on September 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2017. The Center received email communications from the Respondent to the Complainant, dated September 13 and 14, 2017, forwarded by the Complainant (see Rules, paragraph 2(h)(iii)). An informal Response was filed with the Center on September 15, 2017. The Respondent submitted nothing further.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 27, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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
All Panel findings in this section are fully supported by evidence submitted by the Parties.
The Complainant is among the world's leading providers of online social networking services. Facebook allows the sharing of information mainly through its website available at <www.facebook.com>. The Complainant presently has more than two billion users. It is fair to describe the Complainant's website as one of the most recognizable, among users and non-users alike, on the Internet. The Complainant holds multiple trademarks around the world in FACEBOOK, including several registered on the principal register of the United States Patent and Trademark Office ("USPTO"). (See, e.g., Registration Number 3,041,791, registered on January 10, 2006.)
The Respondent describes himself as a "large investor" in the Complainant. He registered the disputed domain name on June 4, 2013. The website to which the disputed domain name resolves is entitled "PokerFaceBook / Poker's Social Network Connecting Poker Players from around the world." This site includes commentary on the card game and appears intended at some point to provide poker players with information about online and real-world playing venues; in the Respondent's words, "[o]ur mission statement is to connect the poker world; safely legally and to the reward them with the best comps [house-provided amenities] not just for them but for their friends too." The website appears to be partially still under construction. There are placeholders but no links for "FB login", a toll-free telephone number, and Facebook and Twitter links.
On May 16, 2017, the Complainant's legal department sent an email to the Respondent asserting its trademark rights and demanding that the Respondent transfer the disputed domain name to the Complainant. On August 24, 2017, the Complainant, through outside counsel, sent the Respondent a cease-and-desist letter, asserting that the registration and use of the disputed domain name violated the Policy because "you [Respondent] have deliberately registered the Domain Name to unfairly take advantage of the goodwill and reputation attached to [Complainant's] FACEBOOK trade mark", and demanding among other things that the Respondent transfer the disputed domain name to the Complainant at no cost.
The Parties continued emails through September 14, 2017, at which date the Complainant filed the Complaint with the Center.
On November 5, 2017, the Respondent submitted a further email directly to the Center.
5. Parties' Contentions
The Complainant contends as follows:
1. The disputed domain name incorporates the Complainant's mark and corporate name FACEBOOK as the principal feature of the disputed domain name. The disputed domain name therefore is confusingly similar to the Complainant's USPTO-registered marks.
2. The Complainant has not licensed the Respondent to use its marks and the Respondent has never been commonly known by the word "Facebook" other than through the website at the disputed domain name. The use to which the Respondent has put the disputed domain name is not legitimate, as it promotes a service – social networking among poker players – competitive with the Complainant's services and intended to take advantage of the renown of the Complainant's marks.
3. The Respondent's bad faith in registration and use of the disputed domain name is established by the following:
a. As an investor in the Complainant the Respondent was aware of the Complainant at registration and thereafter. "Given the Complainant's goodwill and renown worldwide, the Domain Name could simply not have been chosen by the Respondent for any reason other than to capitalize on the Complainant's goodwill and reputation, in order to increase the number of users of its purported social network."
b. The Respondent offered to sell the disputed domain name to the Complainant, something repeated several times in the pre-Complaint email correspondence, and this was his principal reason for his acquiring the disputed domain name. Though several years have passed since registration the Respondent's website remains largely unfinished, with hyperlinks that do not link and similar placeholders on basic features of the website. These facts strongly suggest that the Respondent's intent all along has not been a blog but rather sale of the disputed domain name.
c. The Respondent has registered many other domain names whose dominant features are well-known trademarks. This fact is further evidence that the Respondent registered this disputed domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." Policy, paragraph 4(a)(ii).
The foregoing establishes bad faith in both registration and use of the disputed domain name under the examples of bad faith set forth in clauses (i), (ii), and (iv) of paragraph 4(b) of the Policy.
The Respondent did not formally reply to the Complainant's contentions. In order to "ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case", however, the Panel will consider the arguments set out in the Respondent's email correspondence with the Complainant and Center. Rules, paragraph 10(b).1 The Respondent presents these arguments in scattershot fashion. None is addressed specifically to any particular portion of paragraph 4(a), so the Panel lists them without categorization:
The Respondent has been advised that POKERFACEBOOK is not an infringement of the Complainant's FACEBOOK mark.
"Poker face" is a common English phrase, unrelated to the Complainant or its mark. The disputed domain name should be read as "POKERFACE book" rather than "poker FACEBOOK." Many similar phrases in English are similarly common words or phrases. The Complainant cannot claim trademark rights in any such common word or phrase.
This proceeding is an attempt by the Complainant to acquire the disputed domain name "without actually paying anything."
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy serves primarily as a standing requirement, involving a "reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. "[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." Ibid.
The disputed domain name's dominant feature is the Complainant's registered trademark FACEBOOK, which is clearly recognizable within the disputed domain name. This suffices to satisfy the Complainant's burden of proof under this Policy element.
B. Rights or Legitimate Interests
It is undisputed that the Complainant has never authorized the Respondent to use its marks. The Respondent has maintained a skeletal website at the disputed domain name for several years, but nothing in the record – specifically including the Respondent's pre-Complaint emails with the Complainant – indicates that the Respondent has been known, commonly or otherwise, by the phrase "poker face book" the phrase "poker face", or the word "facebook". Ordinarily to demonstrate legitimacy a respondent must provide evidence to show recognition independently of the domain name at issue. There is no such evidence in this case.
This is so whether a reader emphasizes FACEBOOK or POKER FACE. "Poker face" is indeed a common phrase in the United States. It means "a face lacking any interpretable expression, as that of an expert poker player."2 For several reasons this provides no help to the Respondent. First, registration of a common word or phrase does not automatically confer rights or legitimate interests on a respondent. WIPO Overview 3.0, paragraph 2.10.1. Second, the Respondent is not using the phrase in its dictionary sense. There is nothing about poker faces on the Respondent's website; the limited content is about poker and poker venues. Third, the fact that many common phrases in the English language include the word "book" has nothing to do with this case, simply because "poker face book" is not one of them. Fourth and most importantly, without contrary evidence (which is not present in this case) so prominent an inclusion of a famous trademark in the disputed domain name can be explained by nothing but a desire to benefit from the international recognition of that mark. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.") Certainly it wasn't coincidence, as the Respondent is an acknowledged "fan of" and investor in the Complainant. The Respondent's frank interest in selling the disputed domain name to the Complainant, discussed further in the following section, reinforces this conclusion.
The Complainant has carried its evidentiary burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complaint proceeds under all but the third of the four non-exclusive examples of evidence of bad faith listed in paragraph 4(b) of the Policy. The Panel needs only to look at the first, paragraph 4(b)(i):
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
Demonstrating conduct within clause (i) requires more than simply an offer by the Respondent to sell the disputed domain name to the Complainant. There must be proof, by a preponderance of the evidence, that the disputed domain name was registered "primarily for the purpose" of eventual sale to the mark owner or its competitor, a requirement very often overlooked by complainants.3 The fact that the disputed domain name in this case was registered three years before any claimed use makes proof of the Respondent's intention at the date of registration that much more difficult. The first offer to sell the disputed domain name occurred in 2017, after the Respondent received the Complainant's initial cease-and-desist letter and was thereby notified of the dispute over entitlement to ownership. May the Panel infer from the evidence that the Respondent intended to profit from registration four years earlier?
While strictly speaking all evidence in this case comes from the Complainant, that evidence includes several email communications from the Respondent to the Complainant's representatives in which he provides information about his business and plans for the disputed domain name. None of those plans refer to a blog for poker players, nuances of the game of poker, poker faces, or any other substantive thing other than combining the Complainant's current business with the card game. What the Respondent proposes is sale of the disputed domain name to the Complainant or, if the Complainant not be interested, to others. In the Respondent's words, "Facebook has its sights set on Poker. Poker is a social event and we believe it will generate Huge income for facebook in the future. We have watched aquisitions occure [sic] over and over again and we believe PokerFaceBook.com would be highly brandable and a great addition to Facebook Inc.'s huge domain name portfolio. So to be blunt please act quickly we are potentially going to sell this domain to the Chinese, we may develop it then sell it, or we may just develop it."
As an investor in (and a self-acknowledged "big fan" of) the Complainant the Respondent acknowledges awareness of the Complainant and the value of its FACEBOOK mark in 2013, when it acquired the disputed domain name. The website he set up at the disputed domain name is sketchy, obviously incomplete, and unfocused. For more than four years the Respondent has not bothered even to fill in basic hyperlinks and contact information on what is described as a moneymaking site. The Respondent has not offered evidence of any other activity by him or his company to promote the phrase "poker face" or, for that matter, the game of poker. His only reference to the card game is his hint to the Complainant that there is money to be made from the game and that the Complainant could profit from owning the disputed domain name. All in return for a suitable fee to transfer the disputed domain name, of course.
This is enough to demonstrate bad faith in registration under the criteria of paragraph 4(b)(i) of the Policy. The Respondent's subsequent invitations to sell establish bad faith use.
This conclusion holds whether the use of "pokerfacebook" in the disputed domain name is or is not an infringement of the Complainant's trademarks, a matter on which the Panel expresses no opinion. An infringement is not required to establish bad faith; conversely there have been acts that might constitute infringement that will not ipso facto make out bad faith. What the Policy condemns is conduct deliberately targeting a mark owner, i.e., seeking to profit from tagging on to the goodwill attached to the mark at issue. That has been clearly demonstrated here.
The Complainant has carried its burden of proof under paragraph 4(a)(iii).
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 name <pokerfacebook.com> be transferred to the Complainant.
Richard G. Lyon
Date: November 5, 2017
1 Though under well-settled Policy precedent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.6) the Respondent's November 5, 2017 communication would not be admitted, the Panel admits it here so there is no question that the Respondent has had everything he submitted considered by the Panel.
2 American Heritage of the English Language.