WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. S. Demir Cilingir
Case No. D2018-2746
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 S. Demir Cilingir of Istanbul, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <facebookpartner.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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.
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 December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. The Respondent submitted two informal email communications on December 20 and 22, 2018 but did not submit a formal response. Accordingly, the Center notified the Parties on January 2, 2019 that it would proceed to panel appointment.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on January 16, 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., was founded in 2004. It is a provider of online social networking services. Facebook allows Internet users to stay connected and to share information mainly via its website available at “www.facebook.com”. The Complainant is the owner of numerous domain names consisting of or including the FACEBOOK trade mark under various generic Top-Level Domains as well as under various country code Top-Level Domains. The Complainant has secured ownership of numerous trade mark registrations for FACEBOOK in many jurisdictions around the world.
The disputed domain name <facebookpartner.com> was registered by the Respondent on August 30, 2010.
5. Parties’ Contentions
The Complainant’s case is that it is the world’s leading provider of online social networking services which allows Internet users to stay connected with friends and family, and to share information mainly via its website “www.facebook.com“. Since its launch in 2004, Facebook’s users have increased from 1 million active users to 100 million users in August 2008, 500 million users in July 2010, 1 billion users worldwide by September 2012 and 2.27 billion users as of September 2018.
The Complainant has some 43 million monthly active users in Turkey, which ranks amongst the countries with the highest number of Facebook users. Facebook’s social networking services are provided in more than 70 languages, including Turkish.
The Complainant owns numerous trade mark registrations for FACEBOOK in many jurisdictions throughout the world, including Turkey. Such trade mark registrations include the following:
- United States Trademark FACEBOOK, No. 3,122,052, registered on 25 July 2006;
- International Registration No. 1075094, registered on 16 July 2010, designating Albania, Australia, Bahrain, Bosnia and Herzegovina, China, Croatia, Egypt, France, Georgia, Ghana, Iceland, Japan, Kenya, Macedonia, Montenegro, Morocco, Norway, the Republic of Korea, the Russian Federation, Serbia, Singapore, Sudan, Switzerland, Turkey, Ukraine and Viet Nam.
- Turkish Trade Mark No. 2008 20994, FACEBOOK, registered on 10 March 2009.
The Complainant is also the owner of numerous domain names consisting of or including the FACEBOOK trade mark under various generic Top-Level Domains as well as under various country code Top-Level Domains.
The Complainant was alerted to the fact that its FACEBOOK trade mark and company name had been registered with the addition of the descriptive term “partner” under the “.com” generic Top-Level Domain (“gTLD”) by the Respondent on August 30, 2010. The Respondent appears to be the managing partner of three Turkish marketing and media companies, trading under the names “Alafortanfoni”, “Abnormal Media” and “WhatTheFun”. Until 2011, the Respondent also appears to have been the registrant of the domain names <facebookpartner.net> and <facebookpartner.info>.
The Complainant says that, at the time of filing this Complaint, the disputed domain name does not resolve to an active website. Screen captures from searches carried out on Archive.org show that in February 2011, the disputed domain name temporarily resolved to a GoDaddy parking page displaying pay-per-click links. The disputed domain name does not otherwise appear to have been associated with any active website.
On October 12, 2018, the Complainant’s lawyers sent a cease-and-desist letter by registered post and email asking the Respondent to transfer the disputed domain name to the Complainant. On November 7, 2018, they sent a reminder to the Respondent. Despite the Complainant’s efforts to contact the Respondent, no reply has been received.
The Complainant’s contentions are that:
a) The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The disputed domain name was registered and is being used in bad faith.
The Complainant seeks the transfer of the disputed domain names to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive:
(i) before any notice to you of the dispute, your 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
(iii) you are 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.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
A. Identical or Confusingly Similar
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. states that “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”
As stated above, the Complainant owns numerous trade mark registrations for FACEBOOK in many jurisdictions throughout the world, including Turkey. The Complainant has therefore established trade mark rights in FACEBOOK for the purposes of paragraph 4(a)(i) of the Policy.
Next, the Complainant must show that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.
The disputed domain name incorporates the Complainant’s FACEBOOK trade mark in its entirety as the leading element, with the addition of the descriptive term “partner”.
It is well established that, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”: WIPO Overview 3.0, section 1.8.
The addition of the descriptive term “partner” does not prevent a finding of confusing similarity where the Complainant’s trademark remains clearly recognizable in the disputed domain name.
Additionally, the applicable gTLD “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement: WIPO Overview 3.0, section 1.11.1.
The incorporation point is illustrated by the decision in The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137 where the panel stated that the disputed domain name “…incorporates the RITZ mark in its entirety. Numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy…”
The Respondent had the opportunity to challenge the Complainant’s case but has not done so. The Panel is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant refers to WIPO Overview 3.0, section 2.1 which states 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy (which would demonstrate its rights or legitimate interests in the disputed domain name), submitting that:
- The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its FACEBOOK trade mark, in a domain name or otherwise;
- 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 in accordance with paragraph 4(c)(i) of the Policy.
The Complainant states that, although the disputed domain name does not currently resolve to an active website, there is no evidence that the Respondent has made any preparations to use that domain name in connection with a bona fide offering of goods or services. The fact that hat the disputed domain name temporarily resolved to a parking page:
“…does not in the present case give rise to any rights or legitimate interests in the Domain Name. In this regard, even if the use of the Domain Name in connection with a parking page was the result of an automated action by the Registrar, UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (such as automatically generated pay-per-click links), see WIPO Overview 3.0, section 3.5. The Complainant submits that the Domain Name has otherwise been passively held since its registration in 2010. Such passive holding of the Domain Name cannot constitute a bona fide offering of goods and services under the Policy.” The Complainant refers to the decision of the Panel in Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779: “Passively holding a domain name does not constitute a bona fide offering of goods or services.”
The Complainant submits that the Respondent cannot claim that it is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent’s name is listed as S. Demir Cilingir which:
“…bears no resemblance whatsoever to the Domain Name. Nor can the Respondent assert that it has become commonly known by the Domain Name through its use of the Domain Name, as the Domain Name has not been used. Furthermore, given the Complainant’s notoriety and the fact that the Complainant’s FACEBOOK trade mark is inherently distinctive and exclusively associated with the Complainant, it is highly implausible that the Respondent could come forward with any credible evidence to support a claim of rights or legitimate interests in the Domain Name pursuant to paragraph 4(c)(ii) of the Policy. In addition, the Respondent has not secured any trade mark rights in the term ‘facebook’.”
Finally, the Complainant submits that the Respondent cannot assert that it 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 within the meaning of paragraph 4(c)(iii) of the Policy, since the disputed domain name, which incorporates the Complainant’s trade mark in its entirety, does not resolve to an active website: “Such passive holding cannot confer any rights or legitimate interests in the Domain Name.”
The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Registration in bad faith
The Complainant says that its FACEBOOK trade mark is highly distinctive and famous throughout the world, including Turkey where the Respondent is apparently located. That trademark “has been continuously and extensively used since 2004 in connection with the Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide… Given this, the Complainant submits that it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s FACEBOOK trade mark at the time of registration of the Domain Name in 2010. The Complainant’s trade mark rights predate the registration date of the Domain Name by several years. Moreover, the domain name was registered at a time when the Complainant’s social networking service had already acquired more than 500 million monthly users worldwide...”
The Complainant notes that the Respondent appears to be engaged in the marketing and media industries, and therefore could not reasonably claim to be unaware of the Complainant or its trade marks.
The Complainant therefore submits that the Respondent, having no authorization from or other affiliation with the Complainant, registered the Domain Name in bad faith in full knowledge of the Complainant’s rights, and relies on the fact that rights at the time of registration of a domain name constitute strong evidence of bad faith: WIPO Overview 3.0, section 3.2.2. The Complainant refers to the decision in eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where the panel held that “actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith.”
The Complainant relies on two further matters in support of its contention of registration in bad faith:
1) The fact that the disputed domain name incorporates the Complainant’s trademark in its entirety, together with use of the term “partner”. The Complainant draws the inference that the association of the Complainant’s trade mark with the term ‘partner’ seeks to create “a misleading impression of association with the Complainant, when in fact the Respondent is not a ‘partner’ of the Complainant or affiliated with it in any way. There being no relationship between the Parties whatsoever, the Complainant submits that the Respondent’s registration of the Domain Name amounts to registration in bad faith.”
2) The fact that, in the Complainant’s submission, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trade marks in a corresponding domain name, and has engaged in a pattern of such conduct (evidence in relation to which is set out in an Annex to the Complaint).
Used in bad faith
As to use in bad faith, the Complainant says that, whilst the disputed domain name has not been put to any substantial use in connection with an active website, nevertheless as noted in WIPO Overview 3.0,section 3.3, previous UDRP panels have consistently found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive-holding: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
The Complainant refers to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel considered whether the passive holding of the domain name by the respondent amounted to the respondent acting in bad faith. It concludes that it did, and took into account amongst other things the facts that:
(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.
In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of paragraph 4(a)(iii) 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 <facebookpartner.com> be transferred to the Complainant.
Anthony R. Connerty
Date: January 28, 2019