WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Kristjan Eichler, WebExpress LLC / Arvuti LLC
Case No. D2015-2299
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 Kristjan Eichler, WebExpress LLC / Arvuti LLC of Tallinn, Harju, Estonia.
2. The Domain Name and Registrar
The disputed domain names <facebookblocker.com>, <facebookbusiness.com> and <facebook-for-business.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2015. On December 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 17, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2016.
The Center appointed Petter Rindforth as the sole panelist in this matter on January 18, 2016. 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 Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant, founded in 2004, provides online social networking services worldwide, and is the owner a number of trademark registrations for FACEBOOK, including:
- Community Trademark (CTM) No. 002483857 FACEBOOK, registered on June 13, 2003;
- Community Trademark (CTM) No. 006455687 FACEBOOK, registered on October 7, 2008;
-- International Trademark No. 1075094, FACEBOOK, designating 25 countries around the world, registered on July 16, 2010;
-- United States Trademark No. 3041791 FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004);
-- United States Trademark No. 3122052 FACEBOOK, registered on July 25, 2006 (first use in commerce in 2004).
The disputed domain name <facebookbusiness.com> was registered on December 25, 2014 and the disputed domain names <facebook-for-business.com> and <facebookblocker.com> were registered on January 5, 2015. No information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant describes itself as the world’s leading provider of online social networking services, allowing Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”.
The Complainant has more than 1.55 billion monthly active users and 1.01 billion daily active users on average worldwide (as of September 2015). Its main website “www.facebook.com” is currently ranked as the second most visited website in the world and the third most visited website in Estonia. With approximately 83.5% of its daily active users outside the United States and Canada, the Complainant’s social networking services are provided in more than 70 languages, including Estonian. The Complainant’s trademark FACEBOOK is currently one of the most famous trademarks in the world.
“Facebook for Business” is an official Facebook page available at “www.facebook.com/business”, where the Complainant offers small, medium and large businesses information on how to use Facebook to help their business grow, including how to create a Facebook page, how to advertise on Facebook, ad creation tools, how to measure ad performance and case studies of businesses that have successfully used Facebook to promote their commercial activities. The official “Facebook for Business” page has over 10 million “likes” on Facebook.
The Complainant is the owner of numerous domain names consisting of or including the FACEBOOK mark, for instance, <facebook.com>, <facebook.org>, <facebook.net>, <facebook.biz>, <facebook.com.ar>, <facebook.be>, <facebook.com.br>, <facebook.cn>, <facebook.eu>, <facebook.fr>, <facebook.de>, <facebook.com.gr>, <facebook.hu>, <facebook.in>, <facebook.it>, <facebook.pk>, <facebook.es>, <facebook.com.tr>, <facebook.ua> and<facebook.us>.
The Complainant has also made substantial investments to develop a strong presence online by being active on different social media forums. For instance, Facebook has approximately 169 million “likes” on its Facebook page and over 14 million followers on Twitter.
When the Complainant got knowledge of the three disputed domain names, <facebookbusiness.com> and <facebook-forbusiness.com> connected to the website “www.facebookbusiness.com”. The disputed domain name <facebookblocker.com> directed to “www.facebookblocker.com” which contained a “Need Help?” link to the “www.facebookbusiness.com” website. The Complainant sent a cease and desist letter to the Respondent on July 16, 2015.
On August 6, 2015, the Respondent replied to the Complainant, informing that the Respondent had taken down the websites connected with the disputed domain names for now, but was unwilling to transfer <facebookblocker.com>, <facebookbusiness.com> and <facebook-for-business.com> so he could continue to receive emails at the disputed domain names. The Respondent further informed that he was interested in continuing his social media marketing consultancy business using another domain name.. On September 7, 2015, the Complainant replied to the Respondent, giving the Respondent until November 2, 2015 to transfer the disputed domain names to the Complainant, and asked the Respondent to sign an appropriate agreement in this respect. A follow-up email was sent on September 22, 2015. The Respondent did not reply to either letter.
The Complainant states that the Respondent has a prior history of abusive domain name registrations, referring to a number of domain names, such as <facebookjaime.info>.
The Complainant argue that <facebookblocker.com>, <facebookbusiness.com> and <facebook-for-business.com> are identical or confusingly similar to a trademark in which the Complainant has rights. The addition of the generic terms such as “business” and “blocker” does not diminish the confusing similarity with the Complainant’s trademark but rather reinforces it given that these terms are closely related to the Complainant’s activities and services.
Furthermore, the addition of hyphens in the domain name <facebook-for-business.com>does not diminish the confusing similarity with the Complainant’s trademark.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant nor has the Respondent been otherwise authorized or allowed by the Complainant to make any use of the FACEBOOK trademark in a domain name or otherwise. The Respondent is not commonly known by the term FACEBOOK, and has not used or made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.
Finally, the Complainant states that the disputed domain names were registered and are being used in bad faith.
As the Complainant’s FACEBOOK trademark is highly distinctive and well known throughout the world, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s trademark at the time of registration of the disputed domain names in 2014 and 2015, long after the Complainant had registered its trademark and had acquired considerable renown and goodwill worldwide, including in Estonia, where the Respondent is based and where the Complainant’s official website “www.facebook.com” is amongst the most visited websites in the country (as described above).
It is also submitted that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its well-known trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.
The Respondent was using the disputed domain names to intentionally attract, for commercial gain, internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites.
The Complainant further submits that the confusion caused by <facebookblocker.com>, <facebookbusiness.com> and <facebook-for-business.com> was exacerbated by the “look and feel” of the Respondent’s websites, particularly as they displayed the same blue and white color scheme that is strongly associated with the Complainant. Furthermore, the websites associated with the domain names contained tutorial videos that were taken without authorization from the Complainant’s own official website which further added to the confusion.
The Respondent’s use of the disputed domain names to divert internet users to the Respondents own commercial websites where the Respondent offered the Respondents social media marketing and consultancy services − from which the Respondent was undoubtedly obtaining financial gain – was clearly intended for commercial gain and constitutes bad faith use.
The Complainant requests that the Panel issue a decision that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner the trademark FACEBOOK, registered as United State trademarks, International Trademarks, and Community Trademarks (covering the European Union).
The relevant parts of the disputed domain names are “facebookblocker”, “facebookbusiness”, and “facebook-for-business”, as it is well established in previous UDRP decisions that the added generic Top-Level Domain (“gTLD”) – being a required element of every domain name – may be disregarded when assessing whether or nota domain name is identical or confusingly similar to a trademark.
The Panel concludes that the disputed domain names consist of the Complainant’s trademark FACEBOOK, with the addition of the generic words “blocker”, “business” and “-for-business”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. In this case, FACEBOOK, directly followed by “business” and “-for-business” can be seen to refer to the Complainant’s special web site “Facebook for Business”. See Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee, WIPO Case No. D2011-1837 (“In this case, the descriptive terms “bags” and “shop” have been appended to the Complainant’s registered GOYARD mark, which may serve to heighten Internet user confusion”), as well as Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193 (“Hyphens are generally without legal significance when comparing domain names to trademarks”).
The word “blocker” can be seen as referring to blocking, a technical measure intended to restrict access to information or resources on the Internet, and this addition is not enough to avoid confusing similarity.
The Panel therefore concludes that <facebookblocker.com>, <facebookbusiness.com> and <facebook-for-business.com> are confusingly similar to the Complainant’s trademark FACEBOOK and thus, the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Respondent has no rights to use the Complainant’s trademark or variations thereof and is not an authorized agent or licensee of the Complainant’s services or trademarks. There is also nothing on the record indicating that the Respondent is commonly known by any of the disputed domain names. As such, the Panel finds the Complainant has established a prima facie case on the second element.
By not submitting a formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, or in any other manner, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case.
The Panel notes that the Respondent has used each of the disputed domain names to point to a website with similarities to the Complainant’s website/s, offering social media marketing consulting services. Such use cannot possibly be considered a bona fide offering of goods or services as the Respondent is trading on the Complainant’s goodwill to attract internet users to his website/s by creating a false association with the Complainant. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services”), see also Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
As the Complainant has described and proved, the trademark FACEBOOK is widely known and the trademark registrations are covering, among other territories/countries, the European Union, including Estonia – the home country of the Respondent.
The fact that the Complainant’s trademark FACEBOOK is widely known throughout the world, has also been concluded in several other UDRP cases, such as Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004 (“the Complainant and its FACEBOOK trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the world for its online social networking services”).
As stated above, the disputed domain names consists of the Complainant’s trademark with the addition of generic words, that is, when it comes to “business” and “-for-business”, clearly related to the services provided by the Complainant in connection with the Complainant’s trademark FACEBOOK, and regarding “blocker” associated with a specific Internet service.
The Panel therefore concludes that the Respondent registered all three disputed domain names with full prior knowledge of the Complainant’s trademarks. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products).
The disputed domain names are used, or were at least until recently used, to point to a website with similarities to the Complainant’s website/s, offering social media marketing consulting services. As seen in Annex 12 of the Complaint, the Respondent replied on the initial warning letter, informing that the websites related to the disputed domain names were “important” for the Respondent, “and also provided income for a certain degree”.
Thus, it is obvious that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website/s. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
Also, the fact that the Respondent’s website connected to the disputed domain names is visually very similar to the Complainant’s website/s is a further indication of bad faith use. See Burlington Networks Inc. v. Igor Sashin, WIPO Case No. D2005-1036 (“The Respondent appears to have held itself out to be the Complainant by replicating the look and feel of the Complainant’s website.”)
The fact that the Respondent has taken down the websites associated with the disputed domain names following the discussions with the Complainant does not cure the Respondent’s bad faith as the Respondent’s retention of the disputed domain names continues to represent a threat against the Complainant. Also passive holding of a domain name can constitute, depending on the circumstances, evidence of bad faith, particularly where, as in this case, the trademark is widely known. SeeTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (taking into account the fact that the complaint’s trademark had a strong reputation, that the respondent had not provided any actual or contemplated good faith use, the respondent had taken active steps to conceal its true identity and provided false contact details).
Thus, the Panel concludes that the disputed domain names were registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 names <facebookblocker.com>, <facebookbusiness.com> and <facebook-for-business.com> be transferred to the Complainant.
Date: January 28, 2016