WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Cetinje s.r.o.
Case No. D2014-1070
1. The Parties
The Complainant is Facebook, Inc. of California, United States of America ("US"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Cetinje s.r.o. of Nitra, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <facebookstatusbar.com> is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 20, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2014.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 31, 2014. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
The Complainant is the world's leading provider of online social networking services with more than 1,11 billion registered users worldwide. Founded in February of 2004, Facebook, Inc. has constantly grown and acquired notoriety. According to the web information company Alexa Internet, Inc, the Complainant's "www.facebook.com" website is ranked as the second most visited website in the world and has the second highest traffic in Slovakia where the Respondent is based.
The Complainant owns the following trademark registrations for the purpose of this proceeding:
- Community Trademark Registration No. 005722392 FACEBOOK registered on April 29, 2008 for goods of classes 18, 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter, "the Nice Classification");
- Community Trademark Registration No. 006455687 FACEBOOK registered on October 7, 2008 for goods and services of classes 9, 39 and 42 of the Nice Classification.
The Complainant owns domain name registrations for <facebook.com> registered on March 28, 1997, <facebook.org> registered on April 10, 2004, <facebook.net> registered on March 31, 2004, <facebook.biz> registered on September 11, 2005 and over 150 domain names consisting of the term FACEBOOK.
The publicly available WhoIs indicates that the disputed domain name was registered on February 24, 2012 and is being used by the Respondent to point to a Hungarian language web page including news headlines and advertisements. At the bottom of this web page reference is made by the Respondent advising that "status bar has special significance on facebook, a worldwide used web platform, importance of which manageability is huge".
5. Parties' Contentions
The Complainant contends that the disputed domain name reflects its FACEBOOK trademark in its entirety with the addition of the generic term "status bar", which is a common or descriptive term in computer terminology. Using the term "status bar" in the disputed domain name reinforces the confusing similarity with the Complainant's FACEBOOK trademark, given that it refers precisely to its core services for which the Complainant's trademarks have been registered. Therefore, the disputed domain name is confusingly similar to its inherently distinctive FACEBOOK trademark in which the Complainant has long established and reputed rights based on various trademark registrations.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) and (iii) of the Policy.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. The FACEBOOK trademark is highly distinctive all around the world, including Slovakia where the Respondent resides, and it would be inconceivable for the Respondent to argue that it was unaware of the Complainant and its FACEBOOK trademark at the time it registered the disputed domain name. The fact that the disputed domain name incorporates the term "status bar" is additional strong indication that the Respondent had the Complainant in mind at the time of registration, since in the context of the Facebook platform, the term "status bar" refers to the space allowing users to update their Facebook status.
The Complainant is convinced that the Respondent had registered the disputed domain name in full knowledge of the Complainant's exclusive rights in the famous FACEBOOK trademark and that the only possible reason for registration of the disputed domain name was to seek to unjustly benefit from such rights and ultimately take advantage of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel's decision be made "on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable".
It has been a consensus view among UDRP panels that a respondent's default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent and registrant of the domain name 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. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced sufficient evidence that it holds registered rights in the trademark FACEBOOK. For the purpose of this proceeding, the Panel establishes that the Complainant's Community Trademark Registrations 005722392 and 006455687 both for the mark FACEBOOK satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the FACEBOOK mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the FACEBOOK mark of the Complainant.
According the paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold test for confusing similarity under the Policy the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common or descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name fully incorporates the Complainant's reputed trademark FACEBOOK. The trademark FACEBOOK is not a common word; it identifies the business of the Complainant.
The disputed domain name differs from the Complainant's trademark FACEBOOK in having the term "status bar" added to the trademark, a common or descriptive term in computer terminology. "Status bar" is a horizontal line of information displayed at the bottom or top of an application window, which reports information about the current state of the program or the data contents in the application window (www.pcmag.com/encyclopedia/term/55330/status-bar.).
The Complainant's famous trademark FACEBOOK is the (only) dominant element in the disputed domain name, and combining it with a widely used descriptive term "status bar" cannot be considered sufficient to avoid confusing similarity between the Complainant's trademark and the disputed domain name, it is insufficient to prevent threshold Internet user confusion.
For all these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark FACEBOOK and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark FACEBOOK.
The Complainant never authorized the Respondent to use its FACEBOOK trademark in any way, and the Complainant's prior rights in the FACEBOOK trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden to prove lack of the respondent's rights of legitimate interests in respect of the domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights of legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so it failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant's prima facie case.
On the basis of all these facts and circumstances (also discussed at Section 6.C, below) the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
"(i) circumstances indicating that you [the Respondent] 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Complainant presented extensive and undisputed evidence which convince the Panel that the Respondent evidently knew about the Complainant's rights attached to its reputed FACEBOOK trademark, one of the world's famous and distinctive marks, and that the only plausible reason for registering the disputed domain name is the Respondent's intent to unjustly benefit from the considerable goodwill and reputation attached to the FACEBOOK trademark.
The disputed domain name points to a Hungarian web page including news headlines as well as advertisements. At the top of this web page the Respondent makes direct reference to Facebook's status bar, and the bottom of the web page the Respondent directly refers to Facebook as an important worldwide used web platform.
In view of the Panel all this clearly shows that the Respondent has registered and is using the disputed domain name with obviously having the Complainant's famous FACEBOOK trademark in mind and clearly intending to unjustly benefit or capitalize from the recognition and reputation attached to it.
Under these circumstances the Panel finds that the disputed domain name was registered and is being used in bad faith and paragraph 4(a)(iii) is satisfied.
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 <facebookstatusbar.com> be transferred to the Complainant.
Date: August 12, 2014