WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Prabhjot Benning
Case No. D2018-2521
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 Prabhjot Benning of Brampton, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <facebookaddiction.com> is registered with DropCatch.com 1536 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2018, 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 and contact information for the disputed domain name.
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 22, 2018. On November 22, 2018, the Respondent sent an email communication to the Center stating that it is not the owner of the disputed domain name.
In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on December 17, 2018.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 11, 2019. 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, Facebook, Inc., is a leading provider of online social networking services. The Complainant was founded in 2004 and enables Internet users to stay connected with friends and family, and to share information, mainly via its official website located at “www.facebook.com”. Since its launch in 2004, the Complainant has rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010, 1 billion users worldwide by September 2012 and 2 billion users in June 2017. As of June 30, 2018, the Complainant had approximately 2.23 billion monthly active users and 1.47 billion daily active users on average worldwide. Its main website located at “www.facebook.com” is currently ranked as the third most visited website in the world and in the United States, according to information company Alexa. With approximately 84.5% of its daily active users outside the United States and Canada, the Complainant’s social networking services are provided in more than 70 languages. In addition, Facebook is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market.
The Complainant owns various trade mark registrations around the world that either comprise or incorporate that term “facebook”, including the Canada where the Respondent is based. They include:
(i) International trade mark no. 1075094, for the mark , registered on July 16, 2010;
(ii) Canadian trade mark no. TMA820888, for the word mark FACEBOOK, registered on March 28, 2012; and
(iii) Canadian trade mark no. TMA732799, for the word mark FACEBOOK, registered on January 21, 2009.
The disputed domain name was registered on April 4, 2018.
On April 8, 2018, the Complainant’s lawyers received an email from the email address “[...]@hushmail.com” asking if they would be interested in the disputed domain name. On July 23, 2018, the Complainant’s lawyers wrote to this email address, as well as the Respondent’s email address identified in WhoIs listing, attaching a cease-and-desist letter requesting the transfer of the disputed domain name, noting that the Complainant does not purchase domain names containing its trade mark and will simply prefer to use the Policy to recuperate them.
The Respondent replied on the same day stating that it was not the owner of the disputed domain name but that the disputed domain name was owned by the operators of “Dropcatch.com”, a domain drop catching service. The Complainant replied to the Respondent on August 2, 2018 noting from the historic WhoIs records that the disputed domain name was picked up by “Dropcatch.com” in early April, 2018, and then was put in the name of the Respondent on April 10, 2018. The Complainant does not refer to any response from the Respondent, so it is assumed that none was received.
On August 7, 2018, the Complainant’s lawyers received a further email from the email address “[...]@hushmail.com” offering the disputed domain name for sale for USD 25,000.
The WhoIs details of the disputed domain name at the date of filing of the Complaint are largely masked as a result of privacy legislation. The registrant’s details are redacted but the registrar is listed as “Dropcatch.com”.
At the time the Complaint was filed, the disputed domain name did not resolve to an active website and there is no evidence that it has ever been used by the Respondent.
The Complainant contends that the Respondent was connected with the registrant of four additional domain names incorporating the Complainant’s FACEBOOK mark, which the panel ordered to be transferred to the Complainant on June 25, 2018. In particular, the Complainant also seeks to draw a connection between the Respondent and the email address “[...]@hushmail.com” noted above, from which an offer to sell the disputed domain name for USD 25,000 was made.
5. Parties’ Contentions
The Complainant contends as follows:
1. The disputed domain name is confusingly similar to the Complainant’s FACEBOOK mark in which the Complainant has registered rights (the “Complainant’s FACEBOOK Mark”). In particular:
1.1 the disputed domain name incorporates the Complainant’s FACEBOOK Mark in its entirety with the addition of the generic term “addiction’; and
1.2 the suffix “com” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trade mark as it is a fundamental element;
2. The Respondent has no rights or legitimate interests in the disputed domain name. In particular:
2.1 the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its FACEBOOK trade mark;
2.2 the disputed domain name has never been used and does not currently resolve, and such passive holding cannot constitute a bona fide offering of goods or services under the Policy;
2.3 the Respondent can not claim it is known by the disputed domain name;
2.4 the Respondent can not assert that it has made or is currently making legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy;
2.5 given the renown of the Complainant’s FACEBOOK Mark, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
3. The disputed domain name was registered and is being used in bad faith. In particular:
3.1 given that the Complainant and its mark are well-known, it is inconceivable that the Respondent did not have the Complainant in mind when it registered the disputed domain name;
3.2 given that the Complainant and its mark are well-known, the disputed domain name could only have been chosen by the Respondent to capitalize on the Complainant’s goodwill and reputation;
3.3 the Respondent has engaged in a pattern of conduct by registering further domain names incorporating the Complainant’s FACEBOOK Mark;
3.4 the disputed domain name is not currently resolving and there is no evidence that it has ever been used by the Respondent; and
3.5 the Respondent or a connected party contacted the Complainant’s lawyers asking if the Complainant would be interested in the disputed domain name and subsequently offering the disputed domain name for sale for USD 25,000, an amount in excess of its out-of-pocket expenses.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
Paragraph 5(f) of the Rules provides that, if the respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence demonstrating its rights in the FACEBOOK Mark.
The disputed domain name fully incorporates the Complainant’s FACEBOOK Mark. The Panel accepts that the Top-Level Domain (“TLD”) suffix in the disputed domain name (“.com”) should be disregarded since it is a technical requirement of registration of the disputed domain name and does not serve to distinguish the disputed domain name from the Complainant’s trademark.
The Panel also finds that the term “addiction” in the disputed domain name does not avoid the finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8).
The Panel finds that the Complainant has therefore established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
A prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel notes that no licence or authorisation has been granted to the Respondent in relation to the disputed domain name and the Respondent does not have any type of business relationship with the Respondent. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, which does not resolve to a website.
Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production on this element shifts to the Respondent, who must rebut that prima facie case.
The Respondent has not responded to the Complaint. The Panel therefore finds that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The disputed domain name does not resolve to a website, rather the user simply sees a messaging stating that “This site can’t be reached”. It is the consensus view of panels, with which this Panel agrees, that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see, among others, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574). In coming to such a finding, the Panel is required to look at the totality of the circumstances in each case.
One such factor is the degree of distinctiveness or reputation of the complainant’s mark. The Panel accepts that the Complainant’s FACEBOOK Mark was well known around the world and that the Respondent knew of the Complainant’s mark at the date of registration of the dispute disputed domain name. As such, it would be disingenuous for the Respondent to claim that it was unaware that the registration of the disputed domain name would violate the Complainant’s rights (see, among others, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
The Panel further notes that, by email on July 23, 2018 the Respondent claimed that it was not the owner of the disputed domain name, despite being listed on the WhoIs record for the disputed domain name in May, 2018. If this is the case, the true registrant has taken steps to obfuscate its identity. Similar conduct in previous cases under the Policy has been found to be a contributing factor to a finding of bad faith (see, among others, Moore Capital Management LP v. Domain Administrator, PrivacyGuardian.org / Name Redacted, WIPO Case No. D2017-1641). Further, the disputed domain name was subsequently offered for sale to the Complainant for a sum well in excess of out-of-pocket expenses directly related to the disputed domain name, which is a circumstance of registration in bad faith pursuant to paragraph 4(b)(i) of the Policy.
In addition, the Panel notes that 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).
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) 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 <facebookaddiction.com> be transferred to the Complainant.
Date: January 25, 2019