WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra
Case No. D2018-1145
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 Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Hernando Sierra of Los Angeles, California, United States.
2. The Domain Names and Registrar
The disputed domain names <dlfacebook.com>, <genfb.com>, and <genfb.net> (the "Disputed Domain Names") are registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 25, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 30, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 26, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 4, 2018. 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 provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its official website located at "www.facebook.com". The Complainant is commonly known as FB on the National Association of Securities Dealers Automated Quotations ("NASDAQ") stock exchange. Since its launch in 2004, the Complainant rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 5.5 million in December 2005, 12 million in December 2006, 50 million in October 2007, 100 million in August 2008, 500 million in July 2010, and 1 billion users worldwide by September 2012. As of the fourth quarter of 2017, the Complainant has approximately 2.07 billion monthly active users and 1.37 billion daily active users on average worldwide. Its official website is currently ranked as the third most visited website in the world and the fourth in India, according to information company Alexa. With approximately 84.5 percent of its daily active users outside the United States and Canada, the Complainant's social networking services are provided in more than 70 languages. Also available for mobile phones, the Complainant's mobile application is the fourth most downloaded application in India. Thus, the Complainant enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services.
The Complainant owns numerous trademark registrations in many jurisdictions throughout the world. Such trademark registrations include, but are not limited to, FACEBOOK, United States Registration No. 3,041,791, registered on January 10, 2006, with its first use in commerce in 2004; FACEBOOK, United States Registration No. 3,122,052, registered on July 25, 2006, with its first use in commerce in 2004; FACEBOOK, International Trademark No. 1075094, registered on July 16, 2010; FB, European Union Trade Mark No. 008981383, registered on August 23, 2011; FB, United States Registration No. 4,659,777, registered on December 23, 2014; and FACEBOOK, Indian Trademark No. 1622925, registered on November 9, 2011 (collectively, hereinafter referred to as the "FACEBOOK and FB Marks").
In addition to its official domain name, <facebook.com>, the Complainant is the owner of numerous domain names consisting of or including the FACEBOOK Mark, for instance <facebook.com>, <facebook.org>, <facebook.net>, and <facebook.biz> as well as under country extensions such as <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cn> (China), <facebook.co> (Colombia), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.com.gr> (Greece), <facebook.hu> (Hungary), <facebook.in> (India), <facebook.it> (Italy), <facebook.pk> (Pakistan), <facebook.es> (Spain), <facebook.com.tr> (Turkey), <facebook.ua> (Ukraine) and <facebook.us> (United States).
The Complainant is also the owner of numerous domain names consisting of the FB Mark, including <fb.com> as well as, for instance, <fb.am> (Armenia), <fb.asia> (Asia), <fb.bs> (Bahamas), <fb.co> (Colombia), <fb.fr> (France), <fb.im> (Isle of Man), <fb.ie> (Ireland), <fb.me> (Montenegro), <fb.pe> (Peru), <fb.pt> and <fb.com.pt> (Portugal), <fb.lk> (Sri Lanka), and <fb.uk> and <fb.co.uk> (United Kingdom of Great Britain and Northern Ireland).
The Disputed Domain Names were registered by the Respondent as follows: <dlfacebook.com> on April 29, 2015; <genfb.com> on December 11, 2015; and <genfb.net> on August 18, 2016. The websites to which <dlfacebook.com> and <genfb.com> resolve both list "Bitnol's Production" or "Bitnol Productions" at the bottom of the home pages. The email address "[…]@bitnol.com" also appears in the "Contact us" section on the website to which <dlfacebook.com> resolves.
The Disputed Domain Name <dlfacebook.com> resolves to a website that mimics the Complainant's official website and at which Internet users can download videos uploaded to the Complainant's website and read a tutorial on how to download such videos. The website displays the following disclaimer at the bottom of the page in very fine print: "Note: DownFK.com does NOT have anything to do with Facebook Inc. Facebook trade mark is the property of Facebook Inc. All trademark belongs to their respective owners."
The Disputed Domain Name <genfb.com> also resolves to a website at which Internet users can download videos uploaded to the Complainant's website and read a tutorial on how to download such videos. This website contains commercial links and also displays the Complainant's FACEBOOK Mark, imitating the "look and feel" of the Complainant's official website. The website displays the following disclaimer at the bottom of the page: "All the content posted here is provided by Facebook using Facebook Graph API. We do not hold any copyright of the content posted here. No file is hosted on the server of GenFK. All material is served from the Facebook Server. Facebook is the registered trademark of Facebook Inc (Palo Alto, CA 94301, USA). This website does NOT anything to do with Facebook Inc, YouTube, Vimeo, Metacafe, Dailymotion. Each trade marks are property of their respective owners. All videos are hosted on external servers, we use Graph API from Facebook to display data. Videos are not hosted on GenFK.com. We don't condone use of the site to download copyrighted material without consent."
The Disputed Domain Name <genfb.net> resolves to a website displaying a sample video and shows Internet users how to embed the Complainant's videos in their websites.
The Disputed Domain Names were registered by the Respondent using a privacy protection service through the Registrar. On June 12, 2017, and again on March 8, 2018, the Complainant submitted disclosure requests for the Disputed Domain Names <genfb.com> and <genfb.net> through the privacy protection service's website, but no response was received.
On January 12, 2018, the Complainant's lawyers sent a cease and desist letter to the Respondent and using contact information listed on the website to which the Disputed Domain Name <dlfacebook.com> resolves, asserting the Complainant's trademark rights and asking them to transfer the Disputed Domain Names to the Complainant, but no response was received.
5. Parties' Contentions
The Complainant contends that:
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
- The Disputed Domain Names were registered and are being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):
(i) The Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: First, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the FACEBOOK and FB Marks based on both longstanding use as well as the numerous national and international trademark registrations for the FACEBOOK and FB Marks. The Disputed Domain Name <dlfacebook.com> consists of the FACEBOOK Mark preceded by the letters "dl" and followed by the generic Top- Level Domain ("gTLD") ".com". The Disputed Domain Name <genfb.com> consists of the FB Mark preceded by the term "gen" and followed by the gTLD ".com". The Disputed Domain Name <genfb.net> consists of the FB Mark preceded by the term "gen" and followed by the gTLD ".com".
The Disputed Domain Names incorporate the Complainant's FACEBOOK or FB Marks in their entirety. Prior panels deciding under the Policy have held that "when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy". See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Moreover, numerous UDRP decisions have reiterated that the addition of a descriptive or generic term to a trademark is insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony, WIPO Case No. D2011-2067 (same).
Finally, the addition of a gTLD such as ".com" or ".net" in a domain name may be technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
The Panel finds that the Disputed Domain Names are confusingly similar to a trademark in which the Complainant has rights, and thus the Complainant satisfied the first prong of the Policy.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant's FACEBOOK or FB Marks. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Rather, the Respondent is using the Disputed Domain Names <dlfacebook.com> and <genfb.com> to redirect to webpages that are commercial in nature. Nor is there any evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name <genfb.net>. Rather, the circumstances strongly suggest that the Respondent's intention is to exploit the goodwill and reputation attached to the Complainant's FACEBOOK and FB Marks for its own or a third party's financial gain.
Moreover, the Respondent's registration and use of some of the Disputed Domain Names to resolve to websites that allow the download of videos uploaded to the Complainant's website with tutorials on how to use them is another indication that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Names and that the Complainant has satisfied the second prong of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent's bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant's FACEBOOK and FB Marks prior to registering the Disputed Domain Names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Names after the Complainant first registered and used the FACEBOOK and FB Marks and especially since the Complainant has enjoyed a high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services.
The longstanding and public use of the FACEBOOK and FB Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Names indicates that they were in bad faith.
Second, the Panel finds that the Respondent used some of the Disputed Domain Names in bad faith by attempting to attract for commercial gain Internet users to the Respondent's websites consisting of the Complainant's videos by creating a likelihood of confusion with the Complainant's FACEBOOK and FB Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites under paragraph 4(b)(iv) of the Policy. The disclaimers found on two of the websites to which the Disputed Domain Names resolve do not avoid confusion on the part of potential Internet users and thus, do not negate an inference of bad faith. See Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc, WIPO Case No. D2005-0562.
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Names in bad faith in an attempt to create a likelihood of confusion with the FACEBOOK and FB Marks.
Finally, the fact that the Respondent did not respond to the Complainant's cease and desist letter is additional evidence of bad faith. See Aktiebolaget Electrolux v. zhou lang, WIPO Case No. D2013-1584 ("It is well established and accepted that failure to respond to cease and desist letters without legitimate reason may be evidence of bad faith registration and use.").
Therefore, the Panel concludes that the Complainant has made out its case that the Disputed Domain Names were registered and are being used in bad faith, and as such, the Complainant satisfied the third prong 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 <dlfacebook.com>, <genfb.com>, and <genfb.net> be transferred to the Complainant.
Lynda M. Braun
Date: July 9, 2018