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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan

Case No. D2015-0614

1. The Parties

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

The Respondent is Domain Admin, Whoisprotection.biz of Istanbul, Turkey / Murat Civan of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <facebookdealers.org> is registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2015, 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 17, 2015 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 21, 2015.

On April 17, 2015, the Center notified the Parties in both English and Turkish that the language of the Registration Agreement for the disputed domain name was Turkish. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2015.

The Center appointed Kaya Köklü as the sole panelist in this matter on May 29, 2015. 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 is a leading online social networking service, which was founded in 2004. It has more than 1 billion users worldwide, including almost 40 million in Turkey.

The Complainant is the owner of the mark FACEBOOK, which is currently one of the most famous brands in the online world. The first FACEBOOK trademark registration in the U.S. dates back to the year 2004. In Turkey, the Complainant’s first trademark registration dates back to the year 2009.

The Complainant further owns and operates a large number of domain names like <facebook.com> and <facebook.com.tr>.

The disputed domain name was created on April 7, 2014.

The Respondent seems to be an individual from Turkey, who used a privacy protection service for the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark.

The Complainant argues that the mere difference between the disputed domain name and the Complainant’s trademark is the addition of the term “dealers”. The Complainant is of the opinion that this difference does not negate the confusing similarity with its trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the FACEBOOK trademark in connection with a bona fide offering of goods and services. On the contrary, the Complainant argues that the website linked to the disputed domain name is associated with the spreading of malicious software among misled Internet users.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the wide recognition of the FACEBOOK trademark, the Respondent was or should have been aware of the trademark when registering and using the disputed domain name.

B. Respondent

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

6. Discussion and Findings

To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of the administrative proceeding shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and to request a costly and time consuming Turkish translation of the Complaint, while the Respondent failed to respond to the Center’s communication with regard to the language of the proceeding, although communicated in Turkish and English. Bearing in mind that the disputed domain name consists of two English words indicating that the Respondent is well able to read and write in English, the Panel believes that the Respondent will not be prejudiced by a decision rendered in the English language.

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and

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

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the FACEBOOK trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant has been the owner of a large number of FACEBOOK trademarks, which enjoy a widespread reputation. The famous FACEBOOK trademark is also registered in Turkey, where the Responded is apparently located.

The disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark as it incorporates the FACEBOOK mark in its entirety. It differs only by the addition of the generic term “dealers”. This differentiation is in view of the Panel not suitable to preclude a confusing similarity with the Complainant’s trademark. The Panel finds that this addition is purely descriptive and does not create a new distinctiveness separate from the Complainant’s FACEBOOK trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the term “dealers” enhances the false impression that the disputed domain name is somehow officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark FACEBOOK in the disputed domain name.

In the absence of a Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate one of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. Spreading malicious software with the website linked to the disputed domain name is in any case a strong indication that none of the above mentioned circumstances are relevant in the present case.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant’s famous trademark for illegitimate purposes.

The Panel is convinced that the Respondent must have been well-aware of the Complainant’s famous FACEBOOK trademark when it registered the disputed domain name in April 2014. At the date of registration of the disputed domain name, the Complainant’s FACEBOOK trademark was already registered worldwide and widely known, including in Turkey.

The Panel further believes that the Respondent has chosen a confusingly similar domain name in order to intentionally attract and mislead Internet users in their believing that the disputed domain name is somehow officially affiliated or sponsored by the Complainant.

The Respondent’s attempt to spread malicious software with the website linked to the disputed domain name is in the view of the Panel another indication that the Respondent acts in bad faith.

In the present case, the use of a privacy shield is another indication for bad faith registration and use. Although privacy shields might be legitimate in many cases, the Panel cannot conceive of any legitimate reason why the Respondent preferred to hide its true identity in the present case.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 name, <facebookdealers.org>, be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: June 8, 2015

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