WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Domain Administrator, PrivacyGuardian.org / M. Jarrar

Case No. D2018-2063

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 / M. Jarrar of Surrey, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <facebookgaming.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 12, 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 September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent submitted informal email communications but did not submit a formal response. Accordingly, the Center notified the Parties on September 15, 2018 that it would proceed to panel appointment.

The Center appointed Frank Schoneveld as the sole panelist in this matter on October 26, 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. The Panel extended the date for decision to 20 November 2018.

4. Factual Background

The Complainant is a provider of online social networking services that allow Internet users to stay connected with others, and to share information mainly via its website available at “www.facebook.com” and is available to anyone in the world with a valid email address.

The Complainant is the owner of:

− United States Trademark No. 3041791, FACEBOOK, registered on January 10, 2006;
− Canadian Trademark No. TMA820888, FACEBOOK, registered on March 28, 2012;
− Canadian Trademark No. TMA732799, FACEBOOK, registered on January 21, 2009;
− European Union Trade Mark No. 004535381, FACEBOOK, registered on June 22, 2011; and
− International Trademark No. 1075094, FACEBOOK, registered on July 16, 2010.

The Complainant is the owner of numerous domain names consisting of or including the term “FACEBOOK”, including, <facebook.com>, <facebook.org> and <facebook.biz> as well as under country extensions such as <facebook.ca> (Canada), <facebook.in> (India), <facebook.com.ar> (Argentina), and <facebook.us> (United States).

The disputed domain name was registered by the Respondent on September 11, 2016 through a WhoIs privacy registration service. The Complainant submitted evidence that at the time of filing of the Complaint the disputed domain name redirected to a YouTube gaming channel. The disputed domain name is currently inactive.

On July 18, 2018 the Complainant's lawyer sent a cease-and-desist letter to the Respondent, asserting the Complainant’s rights in the term FACEBOOK and requesting the transfer of the disputed domain name, however the Complainant has not received any reply to this letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide and that its FACEBOOK trademark is currently one of the most famous online trademarks in the world with the FACEBOOK brand ranked 8 in Interbrand's Best Global Brands report. The Complainant asserts that it now has (a) more than 2.13 billion monthly active users and 1.40 billion daily active users on average worldwide with its main website “www.facebook.com” being currently ranked as the third most visited website in the world, according to information company Alexa, and (b) 1.74 billion mobile monthly active users and 1.15 billion mobile daily active users through its “App” being the most downloaded application in the world as per App Annie’s Top Apps Ranking in 2018.

The Complainant submits that because of the exclusive online nature of the Complainant's social networking business, the Complainant's domain names consisting of the FACEBOOK trademark are not only the heart of its business but also the main way for millions of users to avail themselves of the Complainant’s services. The Complainant contends, citing over 20 WIPO domain name decisions concerning the FACEBOOK mark, that the fame of its trademark FACEBOOK is also evidenced by the number of cybersquatters who have sought to unfairly and illegally exploit the very significant consumer recognition and goodwill attached to its trademark, and that prior domain name dispute panels have recognized the strength and renown of the Complainant’s trademark, ordering infringing respondents to transfer to the Complainant the disputed domain name containing the Complainant’s FACEBOOK mark.

The Complainant says that it has made substantial investments to develop a strong presence online by being active on the different social media forums, giving as an example that Facebook’s official page on Facebook has over 207 million “likes” and Facebook has over 14 million followers on Twitter.

The Complainant asserts that the disputed domain name was passively held by the Respondent until recently and was then redirecting to a YouTube channel known as “OJ Games” which allows Internet users to watch gaming videos.

The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, since it incorporates the Complainant’s FACEBOOK trademark in its entirety with the addition of the generic term “gaming” under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant argues that prior panels deciding under the Policy have held that when a domain name wholly incorporates a complainant’s registered mark then that is sufficient to establish identity or confusing similarity for the purposes of the Policy. Further, the Complainant submits that the addition of the generic term “gaming” does not prevent a finding of confusing similarity as the Complainant’s trademark FACEBOOK is still recognized within the disputed domain name, and the term “gaming” only reinforces the association with the Complainant, notably given the latter’s launch of its own Facebook page dedicated to Facebook Gaming in 2007.

The Complainant also contends that the addition of the “.com” extension does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark FACEBOOK as it is generally accepted that such suffix is a functional element and thus irrelevant when assessing under the first element of the Policy.

The Complainant contends that the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise, and that previous panels deciding under the Policy have held that the lack of such prior authorization would be sufficient to establish a prima facie case regarding the respondent’s lack of rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name is currently redirecting to a YouTube channel allowing Internet users to watch gaming videos. The Complainant argues that such use to redirect Internet users, who are looking for information regarding Facebook gaming, to a YouTube channel irrelevant to the Complainant, cannot be considered as a bona fide use of the disputed domain name under the Policy as it is very likely that the Respondent would be able to obtain commercial gain through this channel (e.g., through sponsorship, advertising).

The Complainant argues that (a) the Respondent cannot conceivably claim that it is commonly known by the disputed domain name, particularly given the notoriety surrounding the FACEBOOK trademark and its exclusive association with the Complainant, and (b) neither can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers. The Complainant asserts that it is very likely the Respondent is seeking to make a profit from the Complainant's reputation and goodwill by redirecting Internet users to its YouTube gaming channel, excluding therefore any legitimate noncommercial or fair use of the Domain Name, and, in any event, the fact that the disputed domain name falsely suggests affiliation with the Complainant will generally exclude any possible fair use.

The Complainant also contends that, given the renown and explosive popularity of the Complainant’s FACEBOOK trademark worldwide, it is simply not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent (or a third party) that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant's rights. The Complainant therefore asserts that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant argues that registration in bad faith is demonstrated by (a) the Complainant’s FACEBOOK trademark being highly distinctive and famous throughout the world, having rapidly acquired considerable goodwill and renown worldwide, and has been continuously and extensively used since 2004, and (b) the Complainant’s partnership with Unity Technologies to develop its new gaming platform announced in May 2016 and widely covered by media reports prior to the registration of the Domain Name in September 2016.

The Complainant submits that because of the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s FACEBOOK trademark at the time of registration of the Domain Name in 2016, particularly as the Complainant’s trademark rights significantly predate the registration date of the disputed domain name. The Complainant argues that prior panels deciding under the Policy have acknowledged that it is highly unlikely that a respondent would not have had awareness of the Complainant's rights in the term FACEBOOK, given the nature of the internet and the Complainant’s explosive popularity worldwide, and that actual and constructive knowledge of a Complainant’s rights at the time of registration of such a domain name constitutes strong evidence of bad faith.

The Complainant contends that the Respondent deliberately registered the disputed domain name, which the Complainant says associates the Complainant’s FACEBOOK trademark with the term “gaming”, shortly after the Complainant’s announcement of its project to develop a new gaming platform and the current pointing of the disputed domain name to a YouTube channel providing gaming videos unconnected to Facebook, and this strongly suggests that the Respondent did not register the disputed domain name for any reason other than to attract the Complainant's attention and then resell it to the Complainant in the future for valuable consideration. The Complainant further submits that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, and has engaged in a pattern of such conduct, arguing that registering three domain names incorporating trademarks of third parties such as the Complainant, is sufficient to constitute a pattern of conduct evidencing bad faith.

The Complainant says that, given the Complainant’s highly distinctive and famous trademark, it is unlikely that the Respondent could have registered the disputed domain name, which is confusingly similar to the Complainant’s FACEBOOK trademark, for legitimate speculation, adding that if the disputed domain name is identical or confusingly similar to a highly distinctive or famous mark, panels in previous cases have tended to view with a degree of skepticism a respondent defense that it was merely registered for legitimate speculation as opposed to targeting a specific brand owner.

The Complainant contends that the disputed domain name is being used by the Respondent to intentionally attract, for commercial gain, Internet users to a YouTube channel dedicated to gaming videos by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy. The Complainant says that the disputed domain name targets the Complainant’s well-known and long established FACEBOOK trademark, and its association with the term “gaming” is being used by the Respondent to redirect Internet users to an unrelated YouTube channel allowing them to watch gaming videos, asserting that this makes it clear the disputed domain name is being used for the purpose of misdirecting internet users, based on the confusion with the Complainant’s trademark and name, to an unrelated YouTube channel which is very likely to provide gaming videos for profit. The Complainant further contends that use of the disputed domain name to redirect internet users for commercial gain is recognized by prior panels as strong evidence of bad faith. The Complainant concludes that, given the overwhelming renown and explosive popularity of the Complainant’s FACEBOOK trademark worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant’s trademark, there simply cannot be any actual or contemplated good faith use of the disputed domain name as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights, and that this shows the disputed domain name was registered and is being used in bad faith

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The only communications by the Respondent of potential relevance were emails to the WIPO Arbitration and Mediation Center dated September 19 and 25, 2018 with the following messages:

“Thanks for the info that the domain name is under registrar lock. Not sure what is expected or the next step, but for the record, as soon as I became aware of the emails which were in the Spam folder, I took the following actions:

1- De-activated the domain name.
2- Offered to transfer the domain name to the Complainant
There is nothing else I can do or offer and as explained earlier, the domain name was NOT registered in bad faith.”

and

“I am not a lawyer and can not afford one. The first email I saw related to this matter was on Sep 18, 2018 ... I responded the same day and offered to transfer the domain name. I confirm again that I am willing to transfer the domain name immediately to Facebook and that is all I can offer, I have nothing else to offer.”

6. Discussion and Findings

Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements is present:

(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 Rules at paragraph 15(a) require that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In the absence of any substantive rebuttal by the Respondent to the Complainant’s assertions, the Panel therefore proceeds on the basis of the Complaint submitted by the Complainant and the informal emails received from the Respondent, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence showing that (a) it is the holder of the FACEBOOK trademark registered in (amongst other jurisdictions) Canada and the United States where the Respondent has its respective addresses, and (b) it has rights arising from such registered trademarks. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted.

It is clear that the disputed domain name contains the word “facebook” which is exactly the same spelling as the Complainant’s FACEBOOK trademark and forms the first and more distinctive part of the disputed domain name <facebookgaming.com>. The remainder of the disputed domain name is the dictionary term “gaming”. In the Panel’s view the gTLD “.com” in the disputed domain name, does not in this case affect the disputed domain name for the purpose of determining whether it is confusingly similar to the Complainant’s trademark.

In view of the above, the Panel finds that the disputed domain name is a combination of the same word as the Complainant’s trademark and a dictionary term, and this combination results in the disputed domain name being confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The evidence provided by the Complainant indicates that the FACEBOOK trademark is well known around the world and the Panel accepts that it is well known internationally, including in the United States and Canada where the Respondent has its addresses. There is also evidence that:

(i) the Respondent is not affiliated with the Complainant in any way;

(ii) the Complainant has not licensed or otherwise given permission to the Respondent to register or use any domain name incorporating the Complainant’s FACEBOOK trademark;

(iii) registration of the FACEBOOK trademark in the United States (where the Respondent has one of its addresses) preceded by some ten years the registration of the disputed domain name; and

(iv) the Respondent’s name does not bear any resemblance to the disputed domain name and there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.

Prominent use by the Respondent in the disputed domain name of the Complainant’s well-known FACEBOOK trademark suggests that the Respondent has a right to use this mark in the disputed domain name and/or that the disputed domain name is associated with or sponsored by the Complainant. However, the Complainant makes it very clear that it has never authorized the Respondent to use its FACEBOOK trademark in any domain name, and that its use in the disputed domain name without the Complainant’s permission could well violate the Complainant’s rights in its FACEBOOK trademark. All the above mentioned circumstances indicate that it is more likely than not that the Respondent has no right or legitimate interest in the disputed domain names.

There is no submission or suggestion by the Respondent that the disputed domain name is being used in connection with a bona fide offering of goods or services. The disputed domain name was used to redirect Internet users, who very likely were looking for material on gaming that was connected in some way with the Complainant, the owner of the FACEBOOK trademark. The redirection was to a YouTube channel that has no connection with the Complainant and there is no suggestion that such use was a bona fide use of the disputed domain name. Further, the Complainant contends that such use could not be a bona fide offering of gaming services since any such offering would mislead Internet uses into falsely believing that the offering was being made by, or was sponsored or approved by, the Complainant when clearly it was not.

The evidence provided by the Complainant, together with the conclusion that the FACEBOOK mark is well known, means there is likely to be limited circumstances in which the Respondent might have any rights or legitimate interests in the disputed domain name. In the absence of any submission from the Respondent on this element of the Policy, a prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. In the Panel’s view it is more likely than not the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The FACEBOOK trademark is well known internationally (particularly on the Internet) and was registered in the United States some ten years, and in Canada some six years, before registration of the disputed domain name. Given that the Respondent’s addresses are in the United States and Canada, it is very unlikely the Respondent did not know the Complainant had rights in the well-known FACEBOOK trademark at the time the Respondent registered the disputed domain name, and that use of that trademark in the disputed domain name could very well infringe the Complainant’s trademark rights.

The Respondent does not respond to the Complainant’s contention that the Respondent (a) registered the disputed domain name that associates the Complainant’s FACEBOOK trademark with the term “gaming”, shortly after the Complainant’s announcement of its project to develop a new gaming platform with another company, and (b) shortly thereafter pointed the disputed domain name to a YouTube channel providing gaming videos unconnected to the Complainant. Neither does the Respondent refute or otherwise respond to the Complainant’s allegation that the disputed domain name was being used for the purpose of misdirecting Internet users, based on confusion with the Complainant’s trademark FACEBOOK, to an unrelated YouTube channel which was very likely providing gaming videos for commercial gain.

The email received from the Respondent in September 2018 simply states that the disputed domain name was “not registered in bad faith”, without any explanation of the reason for, or circumstances surrounding, registration of the disputed domain name including why such registration was not in bad faith.

In view of the above, the Panel finds it is very likely that at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark FACEBOOK and chose to incorporate that mark into the disputed domain name to attract Internet users to the video gaming website to which the disputed domain name was redirected. Such a finding is reinforced by the timing of registration of the disputed domain name shortly after the Complainant announced a new project to develop a new video gaming platform with another company in August 2016. The pointing of the disputed domain name to a YouTube channel providing gaming videos unconnected to the Complainant, indicates that the Respondent was likely intentionally attempting to attract Internet users to this YouTube channel providing gaming videos, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolved.

All the above circumstances, including the failure of the Respondent to rebut or respond to the Complainant’s contentions of bad faith registration and use of the disputed domain name, leads the Panel to conclude that is was more likely than not, that the disputed domain name was registered and used in bad faith.

7. Decision

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 <facebookgaming.com> be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: November 22, 2018