WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. te5gfh gtfghbfh

Case No. D2018-2433

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 te5gfh gtfghbfh of Miami, Florida, United States.

2. The Domain Names and the Registrar

The disputed domain names <facebook-item.com> and <facebook-messages.com> (each, individually, a “Domain Name” and collectively, the “Domain Names”) are registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 25, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On October 26, 2018, the Registrar transmitted by e-mail 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 November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2018.

The Center appointed A. Justin Ourso III as the sole panelist in this matter on December 7, 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 well-known provider of online social networking services, Facebook, Inc. The Complainant was founded in 2004; is publicly traded; and its online social networking platform is accessible on the Internet worldwide. The Complainant owns trademark registrations for its FACEBOOK trademark in many jurisdictions around the world, including the United States, where the Respondent appears to reside. The Complainant owns United States Trademark Registration No. 3041791, the earliest of its registrations in evidence, for FACEBOOK for “providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking”, which it registered on January 10, 2006, claiming first use in 2004. The Complainant also owns a European Union trademark for FACEBOOK, registered on June 22, 2011, and an International figurative (design) mark, which includes a word element that consists of its FACEBOOK word mark, registered on July 16, 2010.

The Complainant owns a number of domain names, including <facebook.com>, which it registered on March 29, 1997, <facebook.org>, and <facebook.biz>, as well as numerous country code Top-Level Domain (“ccTLD”) names. Through these web sites, the Complainant offers its online social networking services.

The Complainant alleged in its Complaint, which was certified by its representative, and provided evidence, which was uncontested by the Respondent, that its primary web site, “www.facebook.com”, is the third most visited web site in the world and in the United States, that it has over thirteen million followers on Twitter, and that it had over USD 40 billion in revenue in 2017.

The Respondent, identified in its WhoIs database record with the name and the organization name “te5gfh gtfghbfh,” with its address in Miami, Florida, United States, and which has not submitted a response to the Complaint, owns a registration for the Domain Names, <facebook-item.com> and <facebook-messages.com>, which it registered on May 30, 2018, and June 2, 2018, respectively.

The Domain Name <facebook-messages.com> is currently inactive and the Domain Name <facebook-item.com> resolves to a page which warns users that there is a “Deceptive site ahead” and that “attackers on facebook-item.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards”.

5. Parties’ Contentions

A. Complainant

Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:

1. Its trademark registrations, which predate the registration dates of the Domain Names, establish its trademark rights in the term FACEBOOK.

2. The Domain Names incorporate its FACEBOOK trademark in its entirety and this establishes confusing similarity.

3. The addition of a hyphen and the generic terms “item” and “messages” do not dispel confusion.

4. The addition of the “.com” generic Top-Level Domain (“gTLD”) does not dispel confusion.

5. The Domain Names are confusingly similar to trademarks in which the Complainant has rights.

Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:

6. The Respondent is not a licensee of the Complainant and the Complainant has not allowed the Respondent to use its FACEBOOK trademark, including in a domain name.

7. This lack of prior authorization establishes a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.

8. Once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the Domain Names, the evidentiary burden shifts to the Respondent to rebut this showing by providing evidence of its rights or legitimate interests in the Domain Names.

9. The Respondent has not made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute.

10. The Domain Name <facebook-item.com> previously pointed to a web page with links to other web sites that are unrelated to the Complainant, including one link named “MarketPlace”, which is not a bona fide commercial use.

11. The Domain Name <facebook-messages.com> previously pointed to a web page that prominently displayed the Complainant’s distinctive figurative trademark and imitated the typeface and layout of the Complainant’s official log-in page, to give it the same “look and feel”.

12. Because the Respondent deliberately designed this web page to give visitors the false impression that they were being redirected to the Complainant’s official log-in page, this use cannot be considered a bona fide offering of goods or services.

13. The web page to which the Domain Name <facebook-messages.com> previously pointed requested visitors to enter their confidential account information, including email address and password, in a phishing scam to collect the account information with malicious intent for commercial gain, which cannot constitute a bona fide offering of goods or services.

14. At the time that the Complainant filed the Complaint, both Domain Names resolved to a web page warning of a deceptive site ahead and inviting visitors to click on a button labeled “Back to safety”.

15. The Respondent cannot conceivably claim that he is commonly known by the Domain Names, given the notoriety of the Complainant’s well-known trademark FACEBOOK and its exclusive association with the Complainant.

16. The Respondent has not secured or sought any registered trademark rights in the name “Facebook”.

17. Because the Domain Name <facebook-item.com> previously pointed to a web page with links to other web sites, including one link named “MarketPlace”, this strongly suggests that this Domain Name was being used to redirect visitors to e-commerce web sites, excluding any noncommercial use.

18. The use of the Domain Name <facebook-messages.com> to conduct phishing activities cannot qualify as a noncommercial use because the Respondent sought to harvest information for commercial gain.

19. The Domain Names falsely suggest affiliation with the Complainant by wholly incorporating the Complainant’s FACEBOOK trademark, which excludes any possible fair use.

20. Because of the renown of the Complainant’s trademark worldwide, it is not conceivable that the Respondent could make any plausible actual or contemplated use of the Domain Names that would be legitimate, because any use would inevitably result in misleading diversion and would take unfair advantage of the Complainant’s rights.

21. The Respondent has no rights or legitimate interests in the Domain Names.

Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:

22. Paragraphs 4(b)(ii) and (b)(iv) of the Policy are particularly relevant to the issue of bad faith in this case, that other factors not listed in paragraph 4(b) of the Policy also show bad faith, and phishing is inherently in bad faith.

23. The Respondent is based in the United States, where the Complainant is also based, so the Respondent must have been aware of the Complainant’s distinctive and famous trademark FACEBOOK.

24. The use of the Domain Name <facebook-messages.com> to point to a fake log-in page leaves no doubt that the Respondent was aware of the Complainant when the Respondent registered the Domain Names.

25. The Respondent registered the Domain Names with full knowledge of the Complainant’s rights.

26. Actual and constructive knowledge of a complainant’s rights at the time of registration provides strong evidence of bad faith.

27. The Respondent engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by successively registering two domain names incorporating the Complainant’s well-known FACEBOOK trademarks for the purpose of preventing the Complainant from reflecting its trademark in a corresponding domain name.

28. The Respondent’s name (“te5gfh gtfghbfh”) and contact details (“Florida, Miami, Florida 33132”) in the WhoIs database are obviously not genuine.

29. Providing false information for the WhoIs database to shield a registrant’s identity is evidence of bad faith.

30. Given the Respondent’s knowledge of the Complainant’s rights at the time of registration, the Respondent could not have chosen the Domain Names for any reason other than to capitalize on the Complainant’s goodwill and reputation to increase the visitors to the Respondent’s web site for financial gain.

31. Considering the above, the Respondent registered the Domain Names in bad faith.

32. The use of the Domain Name <facebook-item.com> to point to a web page containing links, including one named “MarketPlace”, and to redirect visitors to e-commerce web sites was for the purpose of misdirecting visitors, based on confusion with the Complainant’s trademark, to unrelated web sites containing commercial or advertising content for commercial gain, which is strong evidence of bad faith registration and use.

33. The use of the Domain Name <facebook-messages.com> to lure visitors to a web page that imitated a log-in page of the Complainant, including duplicating its well-known figurative trademark, and which invited visitors to submit confidential account information, was deceptive and an obvious phishing scam constituting use in bad faith.

34. That the Domain Names may no longer be used actively does not cure the Respondent’s bad faith, because passive holding may constitute evidence of bad faith, particularly when the trademark is well-known and the Registrant contact information furnished for the WhoIs database is false.

35. Given the Complainant’s strong reputation and the nature of the Domain Names, which are confusingly similar to the Complainant’s trademark, actual or contemplated good faith use is not possible, because any use would invariably result in misleading diversion and take unfair advantage of the Complainant’s rights.

36. Considering the above, the Domain Names were registered and used in bad faith.

The Complainant requested that the Panel transfer the Domain Names to the Complainant.

B. Respondent

The Respondent did not submit a response to the Complaint.

6. Discussion and Findings

A. The Effect of the Respondent’s Default

The Respondent has not responded to the Complaint. If a respondent does not submit a response, the panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).

Because the Complainant has the burden of proof, Rules, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; PVH CORP. v. Super Privacy Service LTD c/o, Dynadot, WIPO Case No. D2018-1013; RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190.

Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3.

B. Multiple Domain Names in One Proceeding

The Complainant has initiated this administrative proceeding against the Respondent for the registration and use of two domain names and has requested the transfer of both Domain Names to the Complainant.

The Panel finds that the Respondent registered both Domain Names that are the subject of this proceeding. A complaint may relate to more than one domain name, provided that the domain names are registered by the same person. Rules, paragraph 3(c); WIPO Overview 3.0, section 4.11.1.

C. Elements of a Claim

(i) Identical or Confusingly Similar to the Complainant’s Trademark

To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Names are identical or confusingly similar to this trademark.

The Complainant’s trademark registrations in the United States and the European Union, and its figurative International registration, establish the Complainant’s trademark rights. WIPO Overview 3.0, section 1.2.1; Facebook, Inc. v. Domain Administrator, PrivacyGuarian.org/Hernando Sierra, WIPO Case No. D2018-1145; see also Facebook Inc. v. Domain Admin, Information Privacy Protection Services Limited / Wanghuade / Yanli Li, WIPO Case No. D2015-1975 (“the Complainant has gained rights in the FACEBOOK MESSENGER mark”); Facebook, Inc. v. Xiamen eName Network Co., Ltd / Shawn, Wang, WIPO Case No. D2015-1339 (“the Complainant has unregistered trademark rights in FACEBOOK MESSENGER”).

The Panel finds that the Domain Names are confusingly similar to the Complainant’s FACEBOOK trademark and the Complainant’s figurative FACEBOOK trademark. The Domain Names incorporate the entire FACEBOOK trademark, the figurative trademark incorporates the word mark FACEBOOK, and the FACEBOOK trademark is easily recognizable within the Domain Names. WIPO Overview 3.0, section 1.7; Facebook, Inc. v. Domain Administrator, PrivacyGuarian.org/Hernando Sierra, supra. Additionally, the Domain Name <facebook-messages.com> is confusingly similar to the Complainant’s unregistered mark FACEBOOK MESSENGER.

The inclusion of the terms “item” and “messages” in the Domain Names does not dispel confusion.

Lastly, the inclusion of the gTLD “.com” does not dispel confusion, and is disregarded in determining confusing similarity. WIPO Overview 3.0, section 1.11; Facebook, Inc. v. Domain Administrator, PrivacyGuarian.org/Hernando Sierra, supra.

Accordingly, the Complainant has proven the first element, namely, that the Domain Names are confusingly similar to a trademark in which it has rights.

(ii) Rights or Legitimate Interests

The Policy provides a non-exhaustive list of circumstances that, if a Panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the Respondent of the dispute, its 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

The Complainant’s trademark rights precede the registration of the Domain Names. The Panel finds, on the basis of the Complaint, which the Complainant has certified and the Respondent has not contested, that the Complainant has not licensed or otherwise authorized the Respondent to use the FACEBOOK trademark, including to register or use the mark in a domain name. For these reasons, the Complainant has shown, prima facie, the second element –- that the Respondent lacks rights or legitimate interests in the Domain Names.

Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

The Respondent here has not even submitted a response to the Complaint, much less submitted evidence to rebut the prima facie showing.

If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

Additionally, the Complainant urges that the Respondent has not made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute.

On the basis of the evidence that the Complainant has submitted, which the Respondent has not contested, the Panel finds that (1) the Domain Name <facebook-item.com> previously pointed to a web page with links to other web sites that are unrelated to the Complainant, including one link named “MarketPlace”; (2) this redirection trading on the reputation of the Complainant is not a bona fide commercial use, particularly when the Respondent has masked its identity by providing a name and an organization name that are obviously fake. WIPO Overview 3.0, sections 2.5.3 (“[A] respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests”), 2.9, and 2.13.

On the basis of the evidence that the Complainant has submitted, which the Respondent has not contested, the Panel finds that (1) the Domain Name <facebook-messages.com> previously pointed to a web page that prominently displayed the Complainant’s distinctive figurative trademark and imitated the typeface and layout of the Complainant’s official log-in page, to give it the same “look and feel”; and (2) the Respondent deliberately designed this web page to give visitors the false impression that they were landing on a log-in page of the Complainant, which cannot be considered a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.

Moreover, this landing page invited visitors to enter their account information, including email address and password. This obvious phishing scam to collect account information is not a bona fide offering of goods or services, but a deceptive attempt to gain confidential information for commercial gain. Id.; Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461.

Furthermore, the Panel finds that, when the Complaint was filed, both Domain Names resolved to landing pages warning of a deceptive site ahead and inviting visitors to click on a button labeled “Back to safety.” The Panel infers that the purpose of this button was to lure visitors into clicking on it, either for commercial gain or to download malicious software, not for a legitimate purpose. WIPO Overview 3.0, section 2.13.

The Complainant urges that the Respondent cannot conceivably claim that he is commonly known by the Domain Names, given the notoriety of the Complainant’s well-known trademark FACEBOOK. The Respondent has not even claimed to be known by the Domain Names, much less shown any evidence to this effect. Had the Respondent claimed this, the claim likely would not have been credible, given the fame of the Complainant’s mark, given that the Respondent provided false contact information for the Respondent’s name and the organization name, and considering the evidence that the Respondent has not sought any registered trademark rights in the word “facebook,” which the Respondent has not contested.

The Complainant urges that the Respondent has not shown any noncommercial or fair use.

Because the Domain Name <facebook-item.com> once pointed to a web page with links to other web sites, including one link named “MarketPlace”, the Panel finds that this Domain Name was being used at that time to redirect visitors to e-commerce web sites, excluding any noncommercial use.

Because the Domain Name <facebook-messages.com> once pointed to a web page that invited visitors to enter their confidential account information, the Panel finds that this Domain Name was being used at that time to facilitate phishing activities for commercial gain, excluding any noncommercial use.

Because the Domain Names falsely suggest affiliation with the Complainant by incorporating the Complainant’s FACEBOOK trademark in its entirety; because of the trademark’s worldwide fame; and because the Respondent has engaged in a pattern of registering domain names corresponding to the Complainant’s FACEBOOK trademark, albeit only two times, but within three days of each other, the Panel finds that the Respondent could not make any legitimate noncommercial or fair use of the Domain Names, because any use would result in deception and the diversion of users or potential users of the Complainant. WIPO Overview 3.0, sections 2.5.1, 2.5.2, and 2.5.3.

The Panel finds, from the foregoing evidence, (1) an unrebutted prima facie showing that the Respondent has no rights or legitimate interests in the Domain Names and (2) an intent to deceive by the Respondent, which is not a legitimate interest for registering or using a domain name.

(iii) Registered and Used in Bad Faith

The Complainant urges that (1) paragraphs 4(b)(ii) (a pattern of registrations preventing the trademark owner from using its mark in a corresponding domain name) and 4(b)(iv) (intentionally attempting to attract visitors for commercial gain by creating a likelihood confusion) of the Policy are particularly relevant to proving bad faith in this case, (2) other factors not listed in paragraph 4(b) also show bad faith, and (3) the Respondent engaged in phishing, which is inherently in bad faith.

The Panel finds that (1) the Respondent must have been aware of the Complainant and its FACEBOOK trademark; (2) the Complainant’s trademark FACEBOOK enjoys worldwide renown, i.e., it is an internationally famous trademark; (3) the Respondent used the Domain Name <facebook-messages.com> to point to a fake log-in page on which the Respondent duplicated the Complainant’s well-known figurative trademark; (4) the Respondent engaged in a pattern of conduct by successively registering, within three days, two domain names incorporating the Complainant’s well-known FACEBOOK trademark; (5) the Respondent could not have registered the Domain Names for any purpose other than to divert users and potential users of the Complainant’s social networking services into landing on the Respondent’s web sites for the commercial benefit of the Respondent; (6) the addition of the generic term “messages” may enhance confusion, because of the nature of the Complainant’s social networking platform and the activities that take place on the platform, and because of the Complainant’s unregistered mark FACEBOOK MESSENGER, M/s Daiwik Hotels Pvt. Ltd. v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384; and (7) the name (“te5gfh gtfghbfh”) that the Respondent furnished to the registrar for the WhoIs database is obviously false.

Based on these findings, the Panel finds that the Respondent was aware of the Complainant’s trademark FACEBOOK and the Complainant’s rights in its mark at the time of registration of the Domain Names and that the Respondent registered the Domain Names in bad faith under the Policy, paragraphs 4(a) and (b). WIPO Overview 3.0, sections 3.1.2 (pattern and timing of multiple registrations), 3.1.4 (attracting visitors by creating confusion with a famous trademark and use for per se illegitimate activity such as phishing), 3.2.1 (providing a false contact name), and 3.2.2 (famous mark a respondent cannot credibly claim not to have known). Facebook, Inc. v. Cetinje s.r.o., WIPO Case No. D2014-1070.

The Panel finds that the use of the Domain Name <facebook-item.com> to point to a web page containing links, including one named “MarketPlace”, to redirect visitors to e-commerce web sites was for the purpose of misdirecting visitors, based on confusion with the Complainant’s trademark, to unrelated web sites containing commercial or advertising content for commercial gain.

The Panel finds that the use of the Domain Name <facebook-messages.com> to lure visitors to a web page that imitated a log-in page of the Complainant, including duplicating its well-known figurative trademark, and which invited visitors to submit confidential account information, was an obvious phishing scam.

The Panel finds that, when the Complaint was filed, both Domain Names resolved to landing pages warning of a deceptive site ahead and inviting visitors to click on a button labeled “Back to safety” and that the purpose of this button was to lure visitors into clicking on it, either for commercial gain or to download malicious software.

On the basis of these findings, the Panel finds that the Domain Names were used in bad faith under the Policy, paragraphs 4(a) and 4(b)(iv).

In Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669, the panel found use in bad faith where the trademark was similarly famous throughout the world, the domain name registration was more than seven years after the earliest trademark registration, the trademark was incorporated in its entirety in the domain name, the “look and feel” of the web site to which the domain name resolved was similar to the complainant’s official Help Center, and the respondent used false contact information –- all of which are present in this case. Similarly, in Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736, the panel found that the use of a domain name together with an email account used to solicit information from Internet users by conveying the false impression that the request originated with the complainant was a bad faith use, not unlike the imitation log-in web page in this case that duplicated the Complainant’s famous figurative trademark.

The Panel finds two items of evidence particularly telling in this case on the issue of use in bad faith: (1) the imitation of a log-in page of the Complainant with a duplicate of the Complainant’s famous figurative trademark, which enabled a phishing scam to obtain confidential information of users and potential users of the Complainant’s famous social networking services and (2) the resolution of both Domain Names at the time of the filing of the Complaint to a landing page that warned of a deceptive site ahead and lured visitors into clicking on a “Back to safety” button that would either lead to commercial or advertising content that would result in financial gain for the Respondent or load malicious software that the Respondent would use to harm visitors or for the Respondent’s illegal financial gain.

Previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark can create a presumption of bad faith. Here we have more than mere registration leading to a presumption –- we have demonstrable evidence of bad faith use of a famous trademark. WIPO Overview 3.0, section 3.1.4. Additionally, the use of a domain name for per se illegitimate activity such as phishing is manifestly considered bad faith. WIPO Overview 3.0, section 3.1.4.

The Panel further finds that the Domain Names were being used at the time that the Complaint was filed. Accordingly, it is unnecessary to address the Complainant’s argument that, even if the Respondent had stopped using the Domain Names shortly before the Complaint was filed, this would not have cured the Respondent’s bad faith. If the Panel had found it necessary to address this argument, the Panel would have found that the Respondent was not lacking bad faith, because bad faith had already been shown. Additionally, passive holding may constitute evidence of bad faith, particularly when, as here, the trademark is well known, the Respondent has not provided any evidence, the registrant contact information furnished for the Whois database is false, and, considering all of the circumstances, it is not possible to conceive of any use of the Domain Names that would not be illegitimate. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In any event, bad faith was shown in this case.

Accordingly, the Complainant has proven the third element, namely, that the Domain Names were registered and are being 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 Domain Names <facebook-item.com> and <facebook-messages.com> be transferred to the Complainant.

A. Justin Ourso III
Sole Panelist
Date: December 18, 2018