WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Chigozie Ihebom
Case No. D2018-2190
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 Chigozie Ihebom of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <fblottery.org> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 20, 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 the world’s leading provider of online social networking services. Founded in 2004 it is currently providing the service to approximately 2.23 billion monthly active users and 1.47 billion daily active users worldwide. The Complainant’s social networking services are provided in more than 70 languages. The service is the most downloaded application in the world.
The Complainant’s FB mark was registered with the United States Patent and Trademark Office (“USPTO”), on December 23, 2014 and in the European Union trademark office (EUIPO) on August 23, 2011. The Complainant has developed considerable reputation and goodwill worldwide in both its services and brands through FACEBOOK and FB trademarks.
In addition, the Complainant has registered numerous domain names in which “fb” has been used as the second level domain name or as a significant part of them. For instance, <fb.com>, <fb.asia> (Asia), <fb.fr> (France), and <fb.co> (Colombia).
The disputed domain name <fblottery.org> was registered by the Respondent on June 15, 2017. The registrant is a natural person based in Nigeria. The disputed domain name redirects to a website purportedly in connection with a lottery run by Facebook using and displaying personal data of individual executives and marks connected to the Complainant.
The Respondent has previously been associated with several domain names where the Complainant’s trademarks rights are reproduced, such as <facebooklotto.info>, <facebooklotto.us>, <fbclaims.co.uk>,
<fb-lottery.co.uk>, <fblottery.co.uk> and <fblotery.us> among others.
The Respondent has also registered several domain names including third parties’ trademarks, such as, <natwestbank.co.uk>, <santandersbank.co.uk>, and <wellsfargouk.co.uk> among other registrations.
The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s FB trademark in its entirety with the addition of the generic term “lottery”.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its FB trademark in a domain name or otherwise.
The Respondent cannot assert that, prior to any notice of this dispute, he 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 domain name is resolving to a website purportedly offering a lottery associated with Facebook using its corporate data. Further, the Respondent cannot conceivably claim that he is commonly known by the disputed domain name, having in regard the Complainant’s notoriety and the fact that FB is inherently strongly associated with the Complainant.
Neither can the Respondent assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy since the Respondent is using the disputed domain name to redirect to a webpage supposedly offering a lottery associated with Facebook. The Complainant fiercely points out that it does not provide such lottery services.
The Complainant also asserts that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks are well-known. Thus, it is inconceivable to have no knowledge of the Complainant and its marks. The Complainant supports such allegations of awareness on the following use to the registration of the disputed domain name on the associated website. Indeed, the website displays the Complainant’s marks, includes a hyperlink to the Complainant’s official website as well as a reproduction of the Complainant’s data, such as the names of the founder and the CFO of the Complainant.
The Complainant submits that the Respondent has engaged in a pattern of conduct by registering sixteen domain names incorporating the Complainant’s well-known trademark for the purpose of preventing the Complainant from reflecting its trademarks in a corresponding domain name in accordance with paragraph 4(b)(ii) of the Policy.
With regard to the use of the disputed domain name the Complainant contends that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.
By using the FB trademark with the descriptive term “lottery” in the disputed domain name and by reproducing the Complainant’s trademark in the corresponding website, the Respondent has intentionally been using the disputed domain name to deliberately cause confusion amongst Internet users as to the source or sponsorship of the Respondent’s website. An Internet user would expect to find a website that is registered to, operated or authorised by, or otherwise connected with the Complainant.
Besides, the Complainant alleges that the disputed domain name is being used in relation to a phishing scheme concerning a non-existent Facebook lottery. Further, the Complainant submits that there is also strong evidence that the Respondent is using the disputed domain name to send phishing emails using the address “@fblottery.org” misrepresenting himself as the Complainant.
Finally, the Complainant submits that an additional strong indication of the Respondent’s bad faith is the fact that the Respondent registered the disputed domain name using a privacy protection service to conceal his identity. To support such allegation the Complainant refers to section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
A. Identical or Confusingly Similar
The Complainant has demonstrated accurate trademark registration rights in the FB mark.
The WIPO Overview 3.0, section 1.7, expresses the consensus view of UDRP panels in relation to the first test: “This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Therefore, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark.
It is apparent that a side-by-side comparison of the domain name <fblottery.org> and the FB trademark the latter is recognizable within the disputed domain name.
Besides, it is well established that generic Top-Level Domains (“gTLDs”), as such “.org”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
The Panel, therefore, concludes that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Upon the facts set out above, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name. Indeed, the Respondent lacks rights or legitimate interest in the disputed domain name based on the following: The Respondent is not a licensee of the Complainant nor has he received authorization to register the Complainant’s FB mark as a domain name; the disputed domain name is not used in connection with a bona fide offering of goods or services but for commercial gain to misleadingly divert consumers; and the Respondent is not known by FB.
Being that as it is, it is well established that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. In the present case, the Respondent did not offer any rebuttal although it was duly notified of its right to do so. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
In addition, there is serious evidence of scam activities involving the Respondent by impersonating the Complainant. Here the disputed domain name has been associated with a website which displays the Complainant’s trademark in an attempt to confuse Internet users and to profit from them by a feasible punishable action.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of the Policy, a complainant must establish that the domain name was registered and used in bad faith by the respondent.
The Panel has provided evidence of the well-known recognition of its trademarks and activities. Further, previous UDRP panels have recognized the strength and renown of the Complainant’s trademark. See Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145; Facebook, Inc. v. Shubham Srivastava, WIPO Case No. D2017-2472; or Facebook, Inc. v. Emma Boiton, WIPO Case No. D2016-0623.
The Panel finds under the circumstances of this case that the use of the disputed domain name in connection with a website where the Complainant’s marks are reproduced, it is more likely than not that the Respondent knew of the Complainant, its trademarks, and activities at the time of the registration of the disputed domain name.
With regard to the use of the disputed domain name, the Panel takes into consideration Policy paragraph 4(b)(iv) where bad faith may be shown by evidence of “using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Here, the disputed domain name was used for a website displaying trademarks and other commercial data of the Complainant. The Panel also notes that the composition of the disputed domain names effectively impersonates or suggests sponsorship or endorsement by the Complainant while this is not the case. And further, the lack of any disclaimer informing users about the absence of affiliation with the Complainant support a finding of bad faith use.
Moreover, the activities provided by the website associated with the disputed domain name are linked to a supposedly fraudulent scam scheme. The Panel notes that the Complainant does not provide lottery services as pretended by the site. Accordingly, the use of the disputed domain name is to be deemed in bad faith.
Therefore, the Complainant has succeeded on the 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 name <fblottery.org> be transferred to the Complainant.
Date: December 4, 2018