WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Toriqul Islam / Bright IT, Toriqul Islam (the “First Respondent”), Foyes Babu (the “Second Respondent”), Shafiqul Islam / Stream365, Shafiqul Islam (the “Third Respondent”), Feroj Ahammed, It House (the “Fourth Respondent”)
Case No. D2019-0082
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 Respondents are Toriqul Islam / Bright IT, Toriqul Islam (the “First Respondent”), Foyes Babu (the “Second Respondent”), Shafiqul Islam / Stream365, Shafiqul Islam (the “Third Respondent”) and Feroj Ahammed, It House (the “Fourth Respondent”) all of Bangladesh.
2. The Domain Names and Registrars
The disputed domain names <facebooklivegame.com>, <facebookonlinelive.com>, <facebook-sports.com>, <facebook-watch.com> and <livefacebooklive.com> are registered with the Registrar NameSilo, LLC.
The disputed domain names <fb-live.xyz>, <fb-tv.xyz>, and <fb-livesports.stream> are registered with NameCheap, Inc., LLC.
The disputed domain names <facebookonlinetv.com> and <livefacebooklive.org> are registered with the Registrar OpenTLD B.V. (collectively the “Registrars”).
3. Procedural History
The initial Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2019 against three domain name registrants as a single respondent: a privacy service “Domain Administrator, See PrivacyGuardian.org” of the United States, a privacy service “WhoisGuard, Inc.” of Panama and a registrant from the Netherlands whose publicly-available WhoIs information was masked (the “Initial Respondent”).
On January 15, 2019, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On the same day, the Registrars NameSilo, LLC, Namecheap, Inc. and OpenTLD B.V. transmitted by email to the Center their respective verification responses disclosing the underlying registrants and contact information for the disputed domain names which differed from the named Initial Respondent and contact information in the Complaint. OpenTLD B.V. also disclosed that registration was made through one of its resellers, BiswasIT (the “Reseller”). The Center sent an email communication to the Complainant on January 24, 2019 providing the underlying registrants and contact information disclosed by the Registrars and inviting the Complainant to submit an amendment to the Complaint. On January 25, 2019, the Complainant filed an amendment to the Complaint replacing the Initial Respondent with the underlying registrants collectively as the Respondent. The Complainant also requested to file a single consolidated Complaint against “several nominally-distinct registrants (collectively referred to as the Respondent)”.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent, the Registrars, the Reseller and the Initial Respondent of the Complaint, and the proceedings commenced on January 30, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2019.
On February 3, 2019, the Center received an email communication from one Mr. Benjamin Biswas of the Reseller using the email address “firstname.lastname@example.org” (“Mr. Biswas”), acknowledging receipt of the Center’s communications. He asked that the domain names be deleted or transferred and indicated that his customer has agreed to the transfer or cancellation. He further stated his previous attempt to delete the domain names but was unable to do so due to his “main company restrictions”.
On February 4, 2019, Mr. Biswas filed an online Response with the Center as the Respondent in which he stated that “The Respondent consents to the remedy requested by the Complainant and agrees to Please, transfer all domain to your account. There have no problem from our end or our customer end. the disputed domain name(s).” The Center transmitted the possible settlement email to the parties on the same day.
On February 5, 2019, the Complainant informed the Center that notwithstanding the contents of the communications between Mr. Biswas and the Center, the Complainant does not intend to suspend the proceedings and requested a panel appointment for a decision to be issued on the merits.
The Center appointed Douglas Clark as the sole panelist in this matter on February 28, 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 is the well-known provider of online social networking services, Facebook, Inc., founded in 2004. The Complainant is publicly-traded and its online social networking platform is accessible on the Internet worldwide. The Complainant asserts, also providing evidence, that as of September 30, 2019, the Complainant has approximately 2.27 billion monthly active users and 1.49 billion daily active users on average worldwide. Its main website “www.facebook.com” is ranked as the 3rd most-visited website in the world and in the United States. These assertions are uncontested by the Respondents and have been certified by the Complainant’s representative.
The Complainant owns trade mark registrations for FACEBOOK and FB in many jurisdictions around the world, including a United States trade mark for FACEBOOK, registered on July 25, 2006; an International figurative (design) mark, which includes a word element consisting of its FACEBOOK word mark, registered on July 16, 2010; a European Union trade mark for FB, registered on August 23, 2011; and a United States trade mark for FB, registered on July 28, 2015.
The Complainant also owns various domain names consisting of or including its FACEBOOK and FB trade marks, registered under various generic Top-Level Domains (gTLDs) and a number of country code Top-Level Domains (ccTLDs). Through these websites, the Complainant offers its online social networking services.
The disputed domain names were registered between July 8, 2018 and October 5, 2018 by multiple registrants in the name of a privacy service or had their publicly-available WhoIs Information masked. They were registered with three different Registrars, namely NameSilo, LLC, NameCheap, Inc. and OpenTLD B.V. All underlying registrants appear to be in Bangladesh but the addresses they provided do not show an accurate physical address. All of the disputed domain names make use of the same name servers, namely “NS1.BISWASIT.COM” and “NS2.BISWASIT.COM”.
According to the evidence submitted by the Complainant, except for <fb-tv.xyz> (which appears to have been inactive since registration), all of the disputed domain names resolve to websites in English with a similar layout. These websites purport to offer free streaming of third-party, pay-per-view professional sports events. When attempting to access the content, users are redirected to third-party streaming websites that are unrelated to the content owner. At times, users are warned that “attackers might be trying to steal your information from 4kitv.info (for example, passwords, messages, or credit cards)”.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that all of the disputed domain names incorporate the Complainant’s FACEBOOK and FB trade marks in their entirety, with the addition of the elements “online”, “tv”, “sports”, “watch”, “game” and “live”. The Complainant’s FACEBOOK and FB trade marks remain clearly recognizable in the disputed domain names.
Further, for <facebook-sports.com>, <facebook-watch.com>, <facebooklivegame.com>, <facebookonlinelive.com>, <facebookonlinetv.com>, <fb-tv.xyz>, <fb-live.xyz> and <fb-livesports.stream>, the Complainant’s FACEBOOK and FB trade marks make up the leading element of those disputed domain names.
As such, all of the disputed domain names are confusingly similar to the Complainant’s FACEBOOK and FB trade marks.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names and cannot rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) and (iii) of the Policy.
The Complainant is the owner of numerous trade mark registrations for FACEBOOK and FB in many jurisdictions and has used those trade marks since at least 2004 and 2011 respectively. The Complainant never licensed or authorized the Respondent to use its FACEBOOK or FB trade marks in a domain name, or apply for or use any domain names that incorporate or are similar to its FACEBOOK or FB trade marks.
The Respondent has been distributing unauthorized copies of copyrighted third-party material via the websites at the disputed domain names (except <fb-tv.xyz> which does not resolve to an active website) which then redirect Internet users to third-party streaming websites. The Respondent has no affiliation with the sporting associations whose contents are being offered, and has not been licensed or authorized to provide free streaming services of those contents. The Respondent misleads Internet users that the Complainant is authorized to provide streaming services for sports events, and is deriving click-through revenue from the redirection of Internet users to third-party websites.
The Complainant submits that the Respondent has no recognizable history of using those disputed domain names in connection with a bona fide offering of goods or services, they are not commonly known by those disputed domain names and they are making commercial gain using those disputed domain names.
As for <fb-tv.xyz>, the Complainant submits that it has been passively held since registration in August 2018 which cannot constitute a bona fide offering of goods or services.
Registered and used in bad faith
The Complainant contends that all of the disputed domain names were registered and are being used in bad faith.
The Complainant submits that given the nature of the Internet and the Complainant’s explosive popularity worldwide, the Respondent registered the disputed domain names in bad faith in full knowledge of the Complainant’s rights. The Respondent has engaged in a pattern of abusive domain name registration targeting at the Complainant’s FACEBOOK or FB trade marks. The Respondent is intentionally attracting Internet users to visit the websites at the disputed domain names (except <fb-tv.xyz>) for commercial gain by creating a likelihood of confusion.
As for <fb-tv.xyz>, the Complainant submits that under the doctrine of passive-holding, there cannot be any actual or contemplated good faith use by the Respondent or any third party of this disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Complainant requests that the disputed domain names be transferred to the Complainant.
The Respondent did not file a response.
As mentioned, a Mr. Benjamin Biswas responded to the Complaint in an email communication dated February 3, 2019 in which Mr. Biswas did not respond to the Complainant’s contentions but only stated his willingness for all the domain names to be deleted or transferred and his customer(s) are also agreeable to the arrangement. Mr. Biswas also filed a Response as the Respondent on February 4, 2019. Regarding the Complaint, his response was that “… Actually we are reseller not the user. In future we will never allow this type domain name anymore. Please, transfer all domains to your account. We or our customer don't have any problem with this transfer. Thanks.”. Further, Mr. Biswas consents to the remedy requested by the Complainant and said, “Please, transfer all domain to your account. There have no problem from our end or our customer end”.
This purported consent to transfer is discussed below.
6. Discussion and Findings
6.1. Identity of the Respondents
In the Rules, “Respondent” is defined as “the holder of a domain name registration against which a Complaint is initiated”. As a preliminary issue, the Panel is satisfied from the record (particularly from the Registrars’ verification responses) that the registrants of the disputed domain names are Toriqul Islam, Bright IT, Toriqul Islam, Foyes Babu, Shafiqul Islam, Stream365, Shafiqul Islam and Feroj Ahammed, It House. The contact details provided by the Respondents are incomplete. Their addresses do not show accurate physical addresses in Bangladesh.
The Panel notes that the address and telephone number provided by Toriqul Islam and Bright IT, Toriqul Islam are identical, and will therefore treat them jointly as the First Respondent. Foyes Babu is the Second Respondent. The address and telephone number provided by Shafiqul Islam and Stream365, Shafiqul Islam are identical, and the Panel will treat them jointly as the Third Respondent. Feroj Adammed, It House is the Fourth Respondent (collectively the “Respondents”).
6.2. Request for Consolidation of Multiple Domain Names
The Rules, paragraph 3(c), provides that a Complaint may relate to more than one domain name so long as the disputed domain names are registered to the same holder.
The Rules, paragraph 10(e), empowers the Panel to consolidate multiple domain names disputes, so as to avoid unnecessary duplication of time, effort and expense as well as conflicting or inconsistent results arising from multiple proceedings.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the current views of UDRP panelists on the consolidation of multiple respondents. It provides:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
Having considered the Complainant’s submission in the Complaint, the Panel finds that:
(1) The disputed domain names all make use of the same name servers, namely “NS1.BISWASIT.COM” and “NS2.BISWASIT.COM”, indicating the Reseller’s involvement in the registrations.
(2) The disputed domain names were registered by the Respondents within three months of one another.
(3) The Respondents are all located in Bangladesh. The addresses they provided are incomplete and do not show accurate physical addresses. None of them responded to the Complaint whether formally or informally, and their identities cannot be verified.
(4) The disputed domain names were registered with the three different Registrars and in the name of a privacy service or had their publicly-available WhoIs information masked, indicating the Respondents’ intention to conceal their true identities.
(5) The disputed domain names, except <fb-tv.xyz> which is inactive, all resolve to English websites with similar layout providing online streaming of professional sports events.
(6) Despite inactive, <fb-tv.xyz> was registered by the 1st Respondent with the Registrar Namecheap, Inc. on the same day as <fb-live.xyz>.
(7) The disputed domain names follow a similar naming pattern of incorporating the Complainant’s FACEBOOK or FB trade mark, together with descriptive terms such as “online”, “tv”, “sports”, “watch”, “game” and “live”.
(8) The Complainant’s substantive arguments concerning the disputed domain names are largely the same.
(9) It would be unfair to require the Complainant to file separate complaints against the Respondents (who failed to respond to the Complaint and whose identities cannot even be verified) in the premises.
As such, the Panel is satisfied that the disputed domain names are subject to common control and consolidation would be fair and equitable to all parties.
6.3. Consent to transfer
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) sets out the current views of UDRP panelists when a respondent consents to transfer or cancel the disputed domain name. This provides:
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trade mark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
The Panel also notes the views expressed in the decision John Bowers QC v. Tom Keogan, WIPO Case No. D2008-1720:
“There may be circumstances where it is appropriate to proceed to a consideration of the merits of the Complaint, for example where it is desirable to make a public finding of bad faith against a serial cybersquatter who has repeatedly sought to avoid such a finding by timely concession. It is clear that the panel has a discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant.”
In this case, consent to transfer all disputed domain names has been given not by the Respondents, but a Mr. Biswas who identified himself or his company as the reseller and not the holder of the disputed domain names. Mr. Biswas has not provided any evidence of authority to give this consent.
The Panel notes that Mr. Biswas is not the Respondent and cannot respond to the Complainant’s contentions or consent to transfer unless he is the authorized representative of the Respondent. In the circumstances, the Panel considered whether to issue a Procedural Order to seek from Mr. Biswas evidence of his authority. The making of such order would inevitably cause delay in proceedings.
The Panel also notes that the Complainant has requested a decision on the merits notwithstanding Mr. Biswas’ consent.
Having considered the matter, the Panel is of the view that given the large number of domain names registered by the Respondents who are all apparently linked, the Panel considers there is a broader interest in reaching a substantive determination and will decide on the case on its merits.
6.4. Substantive Decision
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain names are 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 disputed domain names; and
(iii) The disputed domain names have been registered and used in bad faith.
A. Identical or Confusingly Similar
As stated under section 4 above, the Complainant has trade mark rights for its FACEBOOK and FB marks in many jurisdictions in the world.
The Panel finds that the disputed domain names <facebooklivegame.com>, <facebookonlinelive.com>, <facebook-sports.com>, <facebook-watch.com>, <livefacebooklive.com>, <livefacebooklive.org> and <facebookonlinetv.com> are confusingly similar to the Complainant’s registered trade mark FACEBOOK, with the addition of “live”, “game”, “online”, “sports”, “watch” and “tv”.
The Panel finds that the disputed domain names <fb-live.xyz>, <fb-tv.xyz> and <fb-livesports.stream> are confusingly similar to the Complainant’s registered trade mark FB, with the addition of “live”, “tv” and “sports”.
The applicable gTLD “.com”, “.org”, “.xyz” and “.stream” is viewed as a standard registration requirement and does not dispel a finding of confusing similarity in this case.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks right or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second element of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names <facebooklivegame.com>, <facebookonlinelive.com>, <facebook-sports.com>, <facebook-watch.com>, <livefacebooklive.com>, <fb-live.xyz>, <fb-livesports.stream>, <livefacebooklive.org> and <facebookonlinetv.com> have been registered in bad faith and are being used in bad faith.
Given the distinctiveness and popularity of the Complainant’s FACEBOOK and FB trade marks, it is implausible that the Respondents registered the disputed domain names without prior knowledge of the Complainant and its trade marks.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by 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.”
The Respondents have registered those disputed domain names that contain the Complainant’s FACEBOOK or FB trade marks in their entirety. Those disputed domain names resolve to websites purporting to offer free streaming of sports events. This indicates the Respondents’ intention to confuse Internet users that those websites were linked to the Complainant’s business, in particular, the Complainant’s own video-on-demand service under the brand “Facebook Watch”.
The fact that the remaining disputed domain name, <fb-tv.xyz>, does not currently resolve to an active website does not preclude a finding that it has been used in bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3). In the circumstances of this case where nine of the disputed domain names have been registered and used in bad faith, the Panel finds that <fb-tv.xyz> has also been registered with the intent to use it in bad faith.
The third element of paragraph 4(a) of the Policy is therefore satisfied.
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 names, <facebooklivegame.com>, <facebookonlinelive.com>, <facebook-sports.com>, <facebook-watch.com>, <livefacebooklive.com>, <fb-live.xyz>, <fb-tv.xyz>, <fb-livesports.stream>, <livefacebooklive.org> and <facebookonlinetv.com> be transferred to the Complainant.
Date: March 19, 2019