WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Franz Bauer

Case No. D2010-1247

1. The Parties

The Complainant is Facebook, Inc. of Palo Alto, California, United States of America, represented by Cooley LLP, United States of America.

The Respondent is Franz Bauer of Munich, Germany.

2. The Domain Name and Registrar

The disputed domain name <facebok.com> is registered with EuroDNS S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 29, 2010, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the disputed domain name. On July 29, 2010, EuroDNS S.A. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2010.

The Center appointed Jon Lang as the sole panelist in this matter on August 23, 2010. 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 disputed domain name <facebok.com> (the Domain Name) was registered on April 22, 2009.

The Complainant is a provider of online networking services. Its website at “www.facebook.com” is among the top 2 most-trafficked websites of any kind in the world, according to web information company Alexa, and was among the top 5 most-trafficked websites prior to registration of the Domain Name. The services offered on “www.facebook.com” are well-known. They were first offered under the FACEBOOK mark in 2004 as a networking site at Harvard University. Eight hundred additional college networks were added in rapid succession, and by the end of the year the website claimed more than one million active users. In 2006, access to the FACEBOOK service was progressively expanded so that anyone with a valid email address could register as a FACEBOOK user. At the time the Domain Name was registered, the Complainant had 200 million active users worldwide, at least half of whom logged onto the website on any given day. The FACEBOOK website and service was available in Germany (where the Respondent resides) and was translated into German at the time of the Domain Name registration. There were nearly 4 million registered German users at the time of the registration of the Domain Name.

The Complainant has several trademark registrations for the FACEBOOK mark that preceded registration of the Domain Name. Active United States registrations include, among others, Reg. Nos. 3,041,791 (January 10, 2006), 3,122,052 (July 25, 2006), 3,659,516 (July 21, 2009), 3,716,926 (November 24, 2009), 3,734,637 (January 5, 2010), and 3,801,147 (June 8, 2010). Registration of the FACEBOOK mark has also taken place elsewhere including in the European Community, at the African Intellectual Property Organization, Argentina, Australia, Benelux, Brazil, Burundi and in several other countries.

The popularity of the FACEBOOK name and website have made FACEBOOK one of the most famous online marks in the world. The Complainant is regularly covered in the media and is the recipient of many awards.

The Complainant’s reputation is based on the goodwill created from the now half a billion users who visit, post, and otherwise interact on the FACEBOOK website daily. Given the online nature of the Complainant’s networking services, the Complainant’s “facebook” domain names are not only the heart of its business but also the only way for its users to use its services.

The Domain Name is registered in the name of Franz Bauer (the Respondent) but not much is known about him.

In so far as the Domain Name is concerned however, as of July 27, 2010, it re-directed visitors to “http://freebiesfrog.com”, a site that recreates a similar look and feel to the Facebook website. Users are invited to complete surveys about their online experience with the promise of receiving a free (and fairly expensive) gift. Users are then redirected to a new website where they must sign up for a credit card or other type of consumer loan in order to qualify for the gift.

5. Parties’ Contentions

A. Complainant

On August 17, 2009, the Complainant sent an email to the privacy service then listed as the registrant of the Domain Name, requesting the immediate deactivation and transfer of the Domain Name. A representative of the Complainant subsequently spoke with the registrant and the Complainant’s counsel sent a follow-up demand letter on April 6, 2010. Despite those efforts to resolve this dispute, the Respondent continues to use the Domain Name in a manner that creates confusion as to whether the affiliated website is sponsored by or affiliated with the Complainant.

The Respondent registered the Domain Name in April 2009, years after the Complainant adopted and first sought protection for its FACEBOOK mark and well after the FACEBOOK mark had become famous.

Confusing similarity

The Domain Name is nearly identical to the Complainant’s <facebook.com> domain name and FACEBOOK trademark, the only difference being the omitted “O” in BOOK. The Domain Name is a foreseeable and common mistyping of the Complainant’s trademark and domain name, and otherwise is a completely fanciful term with no understood meaning in the English language. It is also virtually indistinguishable, visually, from the Complainant’s mark. Thus, the Domain Name is confusingly similar to the Complainant’s FACEBOOK mark.

By adopting a Domain Name that is nearly identical to the Complainant’s FACEBOOK mark, and which conveys the same overall visual and phonetic impression, the Respondent has created a mark confusingly similar to the FACEBOOK mark and has attempted to capitalise on the FACEBOOK brand.

Moreover, the look and feel of the Respondent’s website are quite similar to the Facebook website. As such, the Respondent is attempting to trade off of the valuable goodwill in the FACEBOOK brand and Facebook website trade dress.

Legitimate rights or interests

The Respondent registered the Domain Name in April, 2009, by which time the Complainant had hundreds of millions of users worldwide and had well established rights in its FACEBOOK mark, domain name, and website at “www.facebook.com”, such that the Respondent was undoubtedly aware of the Complainant’s activities and use of its domain name. The FACEBOOK brand was also widely registered throughout the world at the time of the Domain Name registration.

To the best of the Complainant’s knowledge, the Respondent is not commonly known by the FACEBOOK or FACEBOK name, and has not secured or even sought to secure any trademark rights in the FACEBOOK or FACEBOK name. Thus, there is no reason for the Respondent to have selected the Domain Name other than to create an association with the FACEBOOK mark and attract users seeking to access the Facebook service. This does not create a legitimate interest in the Domain Name.

Moreover, the mere addition of a minor misspelling or typographical error in a mark does not create a new or different mark in which the Respondent has legitimate rights.

Furthermore, the Respondent cannot claim that he is offering bona fide goods or services by redirecting the Domain Name to a website soliciting credit card applicants under the guise of a survey presented on a site similar to the look and feel of the Facebook website. Indeed, the “http://freebiesfrog.com” website appears to have no affiliation whatsoever with the term “facebok”.

The Respondent’s use of the Domain Name in this manner serves as substantial proof of his lack of any legitimate rights or interest in the Domain Name. The Respondent in all likelihood profits by redirecting users to the “http://freebiesfrog.com” website and is therefore capitalising on the FACEBOOK brand. This does not amount to legitimate noncommercial or fair use of the Domain Name, and the use of an identical or confusingly similar domain name to redirect users to a third-party website cannot amount to a bona fide offering of services.

In summary, the Complainant believes that these circumstances are sufficient to establish, prima facie, that the Respondent has no legitimate rights or interest in the Domain Name.

Bad faith

Given Complainant’s worldwide prominence, both now and at the time the Domain Name was registered, it is clear that the Respondent registered the Domain Name in bad faith with full knowledge that using a common mistyping of the FACEBOOK mark would likely attract users to his website.

The Respondent’s bad faith is also supported by the fact that he registered the Domain Name a number of years after the Complainant adopted, began using, and registered its FACEBOOK trademark and established rights in its <facebook.com> domain name. “Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith”, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.

Moreover, registration of a domain name that is confusingly similar to a Complainant’s mark but which is otherwise meaningless is further evidence of bad faith registration and use.

The Respondent continues to use the Domain Name despite the Complainant’s efforts to resolve the matter informally, and has never responded to the Complainant’s correspondence which is itself “strong support for a determination of ‘bad faith’ registration and use”, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-1633.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that:

(i) the respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the FACEBOOK trademark so the question arises as to the similarity of the Domain Name (<facebok.com>) and the trademark. Save for the missing ‘o’, they are identical (ignoring the “.com” suffix). There is therefore a very close visual and phonetic similarity.

In Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380, where the domain name at issue was <zerox.com>, it was said by the Panel:

‘With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Name, previous decisions extensively discussed the subcategory of cybersquatters who are sometimes called “typosquatters”. One of these decisions is The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, where the appointed panel held: “In determining whether a domain name is confusingly similar to a trademark, the intention of the domain name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed. The panel finds that the disputed domain name is likely to attract customers of the broker seeking to access the broker's website who misspell or err in typing the domain address they seek. The close misspellings at issue here are confusingly similar to the Complainant's mark.”’

The present case is similar to the Xerox case (although in the Xerox case the Internet user is perhaps more likely to have typed ‘Zerox’ because of an imperfect recollection of, or incorrect guess at the correct spelling of the entity it is seeking on the web, rather than because of a simple typing error).

It might be said that given an Internet user is likely to end up at the Respondent’s site only after mistyping ‘facebook’, that confusion doesn’t come into it – the Internet user simply makes a typing mistake. However, it is clear that confusing similarity for the purposes of this limb of the test goes to, or can be satisfied by, a visual and/or phonetic and/or aural comparison of the complainant’s mark and respondent’s domain name. Thus in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For sale, WIPO Case No. D2000-0662 it was said;

‘Nevertheless, the Panel understands the phrase "identical or confusingly similar" to be greater than the sum of its parts. The Policy was adopted to prevent the extortionate behavior commonly known as "cybersquatting," in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior. Thus, the Panel concludes that a domain name is "identical or confusingly similar" to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity. Having so concluded, Respondent’s use of the domain name <wal-martsucks.com> meets all three of the conditions necessary to justify a transfer of the domain name to Complainant.’

The Panel finds that this limb of the test under paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. In Drexel University v. David Brouda, WIPO Case No. D2001-0067 the panel stated that:

“[r]ights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.

It seems to this Panel that by analogy, legitimate interests cannot be created where the registrant would not choose the domain name in question unless it were for the purposes of capitalising on Internet users making typographical errors when searching for a website that has nothing at all to do with the registrant. Re-directing Internet users to a website they have no wish to visit because they mistype and happen to stumble upon a domain name intended to be confusingly similar to the trademark of the entity the user hopes to find on the Internet, can hardly be said to be a bona fide use of the domain name. Moreover, given the use to which the Domain Name has been put, it can hardly be said that there is any legitimate non-commercial or fair use.

The Respondent has no known connection or affiliation with the Complainant, or its trademark. In fact, there is no evidence at all before this Panel that the Respondent has any rights or legitimate interests in the Domain Name. Nor is there any evidence before this Panel to contradict or challenge the contentions of the Complainant. In all the circumstances therefore, this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and accordingly finds that this element too of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

In Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 it was said:

‘Respondent’s practice of using the domain names for the purpose of diverting users to an unrelated Internet site is "classic bad faith." Backstreet Prods., Inc. v. Zuccarini, WIPO Case No. D2001-0654….Misspellings alone are "sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark." AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937 (October 13, 2000) § 6.

The Respondent has registered not one, but three, separate misspellings of the name "Wachovia" for the purpose of diverting users to an unrelated site for his own commercial gain.’

In Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said:

‘It has been held that actual or constructive knowledge of the Complainant's rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such rights.

Previous cases have also established that the deliberate choice and registration of a famous mark as domain names suggests, in the absence of an explanation from the Respondent, that the registrations were made in bad faith.’

It seems almost inconceivable that the Respondent did not know of the Complainant’s mark prior to his relatively recent registration. FACEBOOK is a famous mark and it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of the Domain Name. It is difficult to arrive at a conclusion other than that the Domain Name has been registered to take unfair advantage of the Complainant’s rights. Internet users searching for the Complainant’s website who omit an ‘o’ from an otherwise correctly spelt domain name will be transported away from the Complainant’s website to a website they have no wish to visit. That such would be the result of registration of the Domain Name must have been obvious to the Respondent. Indeed, it is likely to have been the very reason for registration. This is disruptive to the Complainant’s business and in all the circumstances, this Panel finds, for the purposes of the Policy, that the Respondent has registered and used the Domain Name in bad faith.

7. Decision

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

Jon Lang
Sole Panelist
Dated: September 3, 2010