WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Vladimir Ogrokhin
Case No. D2015-0890
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 Vladimir Ogrokhin, GlobalNet Ltd. of Odessa, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <facebookoff.biz> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2015. On May 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2015, 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 proceeding commenced on June 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2015. The Respondent did not submit any response except for an email communication to the Center on June 1, 2015, of which the Center acknowledged safe receipt. On June 29, 2015, the Center notified the parties that it would proceed to Panel Appointment.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 2, 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 was founded in 2004 and today is a leading provider of online social networking services counting over 1.39 billion users and having its “www.facebook.com” website ranked as the 2nd most visited website in the world (Annex 4 to the Complaint).
The Complainant is the owner of the trademark FACEBOOK registered in the United States of America under Nos. 3041791, registered on January 10, 2006 and 3122052 registered on July 25, 2006 (Annex 13 to the Complaint).
The disputed domain name <facebookoff.biz> was registered on October 17, 2010. Currently an active webpage on which a social network is available resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts that it is the world’s leading provider of online social networking services, with revenues reaching USD 12.5 billion and the owner of the famous FACEBOOK trademark, actively promoted and used by it throughout the world.
According to the Complainant, a website that prominently displays a logo almost identical to the Complainant’s FACEBOOK trademark with the mere addition of the term “off” resolves from the disputed domain name. Moreover, the website in question provides an “alternative” social network, services that are identical or similar to those offered by the Complainant.
Furthermore, the Complainant asserts that the Respondent, an individual based in Ukraine, is active on different social media websites amongst which is the Complainant’s own social networking website (Annex 11 to the Complaint).
Prior to submitting the Complaint, the Complainant sent a letter to the Respondent on February 18, 2015, requesting the transfer of the disputed domain name. On February 19, 2015, the Respondent replied stating that he was negotiating with investors the launch of a social network but offered the disputed domain name for an amount “that is not very small”. On the same day the Complainant replied stating that it would not reimburse expenses incurred for the transfer of the disputed domain names.
On March 23, 2015, the Complainant sent a cease and desist letter. On that same day the Respondent replied stating that he would only transfer the disputed domain name “on commercial terms” and that any claim brought by the Complainant against him would be an “incredibly huge advertising push for the rapid development of social networking facebookoff.biz. You yourself create a competitor”.
The Complainant states that on March 24, 2015, the Respondent contacted the Complainant’s Ukrainian lawyers by telephone when he refused the Complainant’s lawyers’ offer to reimburse his out-of pocket expenses (USD 100) for the disputed domain name which he would only transfer for around USD 50,000. During said telephone conversation the Respondent would also have said that he would be willing to defend any court proceedings brought against him regarding the disputed domain name; that as a result of such proceedings he would obtain publicity that would help increase his popularity in Ukraine. In addition, the Respondent also stated that he would register other domain names incorporating FACEBOOK, such as <facebookoffvladymyrogrohin.biz>.
The Respondent’s conduct therefore leads the Complainant into filing this Complaint in which it asserts in summary that:
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s notorious trademark, creating a likelihood of confusion, given that its trademark’s distinctive element is reproduced in it with the addition of the generic term “off” which is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
(a) the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark;
(b) the Respondent cannot assert that he is using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with Paragraph 4(c)(i) of the Policy;
(c) the Respondent in not commonly known by the disputed domain name nor has he acquired any rights over the term FACEBOOK which is exclusively associated with the Complainant;
(d) given the overwhelming renown of the Complainant’s FACEBOOK trademark it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent (or a third party) other than the Complainant that would not be illegitimate, as it would inevitably result in misleading diversion.
As to the registration of the disputed domain names in bad faith the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain name considering that in 2010 the Complainant’s social networking service experienced a rapid growth in Ukraine reaching almost one million users by the end of that year (Annex 5 to the Complaint).
The Complainant further states that the Respondent is deliberately using the disputed domain name, identically reproducing the Complainant’s trademark, seeking to attract Internet users to his website offering identical or similar services to those offered by the Complainant (i.e. a social networking website), deliberately seeking to cause confusion amongst Internet users.
Thus, according to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true.
Lastly, the fact that the Respondent repeatedly stated that “transmission [of the disputed domain name] may be possible only on commercial terms” and that he would only transfer the disputed domain name for “not a small amount” (Annex 12 to the Complaint), which during the telephone conversation with the Complainant’s lawyers the Respondent revealed to be around USD 50,000, is further strong evidence that he is seeking to obtain financial gain derived from the Complainant’s rights and goodwill.
The Respondent did not reply to the Complainant’s contentions. The Respondent’s June 1, 2015 email was non-substantive.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights in the FACEBOOK trademark duly registered in several countries around the world (Annex 13 to the Complaint).
In this case, the addition of the generic term “off” does not avoid a likelihood of confusion with the Complainant’s famous trademark, more so considering the Respondent’s use of the disputed domain name in connection with competing services (i.e. social network). The generic Top-Level Domain (“gTLD”) “.biz” would usually be disregarded for the purpose of the first element analysis as it is a technical requirement of registration.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.
B. Rights or Legitimate Interests
The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from default as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Indeed the Respondent is using the disputed domain name, which identically reproduces the Complainant’s famous trademark to a website offering identical or similar services to those offered by the Complainant. Such cannot be considered a bona fide offering of goods or services under the Policy.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has also been met.
C. Registered and Used in Bad Faith
This case presents the following circumstances which indicate bad faith registration and use of the disputed domain names:
a) the Complainant’s trademark is registered worldwide and is well known;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain name;
c) the Respondent evidently was aware of the Complainant and its trademarks in view of the contents of the website that resolves from the disputed domain name;
d) the Respondent gave a false physical address to which the Center’s communications could not be delivered;
e) the reproduction of the Complainant’s logo at the Respondent’s website could create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.
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 <facebookoff.biz> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 3, 2015