WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. on behalf of customers
Case No. D2016-0244
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 on behalf of customers of Minhang, Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <facebookstar.com>, <facebookvideos.com> and <gamesonfacebook.com> are registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 11, 2016, 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 proceeding commenced on February 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2016. The Center received an informal communication from the Respondent on February 17, 2016 in which the Respondent indicated that he would like to release the disputed domain names to the Complainant. On the same day, the Center invited the Complainant to comment if it would like to suspend the proceeding to explore settlement between the parties. No reply was received from the Complainant. On March 7, 2016, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on March 8, 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.
4. Factual Background
The Complainant is a company, organized under the laws of the United States.
According to the uncontested allegations of the Complainant, the Complainant is the world leader provider of online social networking services. It was founded on 2004 and it connects Internet users mainly with friends and family.
According to the uncontested allegations of the Complainant, it has today more than 1.59 billion monthly active users and 1.04 billion daily active users on average worldwide, as of December 2015.
The Complainant is owner of many trademark registrations in the term FACEBOOK all over the world including in China, where the Respondent seems to be based. In particular, the Complainant owns United States Trademark No. 3041791, FACEBOOK, registered on January 10, 2006, United States Trademark No. 3122052, FACEBOOK, registered on July 25, 2006 and Chinese Trademark No. 5251162, FACEBOOK, registered on September 21, 2009.
The Complainant submits it is extensively advertising its trademarks. The disputed domain names were registered as follows: <facebookstar.com>, registered on December 30, 2011, <facebookvideos.com>, registered on November 22, 2012 and <gamesonfacebook.com>, registered on January 13, 2013.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent sent an informal communication on February 17, 2016, saying that he would like to release the disputed domain names to the Complainant. No further submissions were made.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy ("In the administrative proceeding, the complainant must prove that each of these three elements are present"). As such, the Panel can not merely grant the Complainant's request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights internationally.
The mere fact that the Respondent has added the descriptive words "star", "videos" and "games" and the generic Top-Level Domain ("gTLD") ".com" does not to this Panel affect the essence of the matter: the disputed domain names are identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252; Nationwide Mutual Insurance Company v. Whois Agent, Whois Privacy Protection Service, Inc./ Zhichao Yang, WIPO Case No. D2015-1129.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain names <facebookstar.com>, <facebookvideos.com> and <gamesonfacebook.com> are confusingly similar to the Complainant's trademark FACEBOOK.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute: the Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark rights: In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record.
The Respondent does not seem to have any trademark registrations including the term "Facebook". Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever. Furthermore, the Respondent rather seems to have wished to release the disputed domain names to the Complainant. Thus allowing the inference that no rights exist.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant's argumentation on this point is mainly based on the circumstances mentioned in paragraph 4(b)(iv) of the Policy in order to demonstrate the Respondent's bad faith registration and use of the disputed domain names.
In reviewing the present case, it appears that the Respondent has registered the disputed domain names in bad faith.
The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally the disputed domain names that are identical or confusingly similar to the Complainant's FACEBOOK trademark. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainant's reputation.
Further, according to the uncontested allegations of the Complainant, the disputed domain names at the time of filing the Complaint were used to attract users to the Respondent's site, to direct at such users offers and advertising for commercial gain.
In addition, the use of the disputed domain names by the Respondent is to encourage consumers to believe that they are connected to the Complainant.
The Panel also notes the lack of Response, which in the present circumstances "reinforces the inference of bad faith registration and bad faith use". The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain names are identical or confusingly similar to trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith.
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 <facebookstar.com>, <facebookvideos.com> and <gamesonfacebook.com> be transferred to the Complainant.
Christos A. Theodoulou
Date: March 10, 2016