WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Tstacy Muniru
Case No. D2017-1934
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 Tstacy Muniru of New York, New York, United States.
2. The Domain Names and Registrar
The disputed domain names <facebookactivity.com>, <facebook-marketplace.info>, <facebook-privacy.com>, <facebook-support.com>, <fbk-marketplace.com>, and <support-facebook.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 4, 2017, 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 October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 27, 2017.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 2, 2017. 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 provides an online social media platform and related services under the marks FACEBOOK (e.g., United States Trademark Registration No. 3,041,791, registered on January 10, 2006) and FB (e.g., United States Trademark Registration No. 4,659,777, registered on December 23, 2014).
The Respondent registered the disputed domain names on the dates listed below:
<facebook-privacy.com> January 27, 2017
<facebook-marketplace.info> February 16, 2017
<fbk-marketplace.com> February 22, 2017
<facebook-support.com> March 8, 2017
<facebookactivity.com> March 8, 2017
<support-facebook.com> March 8, 2017
The Respondent has allegedly used each of the disputed domain names for various nefarious purposes, including phishing, identify theft, distribution of malware, and other activities that present security risks to Internet users.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant's trademarks FACEBOOK and FB in their entirety. The additional words "privacy", "marketplace", "support", and "activity" in this context do not distinguish the disputed domain name from the Complainant's marks. The Panel finds that the addition of the letter "k" to "fb" in <fbk-marketplace.com> does not diminish the confusing similarity with the Complainant's FB trademark, but rather reinforces it, as it leaves no doubt that "fbk" refers to the Complainant.
Similarly, the addition of a Top-Level Domain ("TLD") to a disputed domain name does not avoid confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of trademark registrations for the marks FACEBOOK and FB as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by assessing whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests in respect of the domain names, shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, there are several indicators concerning the Respondent's lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain names, nor is there any evidence in the record showing the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain names.
C. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the domain names were registered and are being used in bad faith. Based on the available record, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Engaging in phishing, identity theft, distribution of malware and otherwise creating security risks while using domain names that incorporate the Complainant's marks is a strong example of bad faith under the Policy. The fact that some of the disputed domain names do not currently appear to resolve to active websites does not prevent a finding of bad faith in the circumstances.
Accordingly, the Panel finds the Complainant has satisfied this third element 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 <facebook-privacy.com>, <facebook-marketplace.info>, <fbk-marketplace.com>, <facebook-support.com>, <facebookactivity.com>, and <support-facebook.com> be transferred to the Complainant.
Evan D. Brown
Date: November 15, 2017