WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Qian Mengdan
Case No. D2019-0251
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 Qian Mengdan of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <portalfacebook.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On February 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 8, 2019.
The Center verified that the Complaint together with the amended 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 February 8, 2019. On February 9, 2019, the Respondent sent a substantive email communication to the Center. The Center asked the Respondent to confirm if the communication should be treated as a complete Response. No further communication was received by the Response due date. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. Accordingly, the Center notified the Commencement of Panel Appointment on March 1, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 8, 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 was founded in 2004. It operates “Facebook”, an Internet platform that allows people potentially anywhere in the world to post messages and other material that may be read by multiple friends, relatives and others in order to keep in touch. Presently Facebook has on average some 2.23 billion monthly active users and 1.47 billion daily active users. Annual revenue at the end of 2017 was over USD 40 billion.
“Facebook Portal”, released on October 8, 2018, is a facility provided by the Complainant that enables video chat, augmented by a smart-camera that can auto-zoom and follow people when they move around.
The Complainant holds numerous trademarks, of which the following are representative for the purposes of this proceeding:
FACEBOOK, United States Patent and Trademark Office (USPTO), registered January 10, 2006, registration number 3041791, classes 35, 38;
FACEBOOK, European Union trademark, registered June 22, 2011, registration number 4535381, classes 35, 38;
FACEBOOK, international trademark, registered July 16, 2010, registration number 1075094, classes 9, 35, 36, 38, 41, 42, 45.
The Complainant also owns numerous domain names including <facebook.com>, <facebook.org>, <facebook.biz>, <facebook.ca>, <facebook.in>, <facebook.com.ar>, <facebook.be>, <facebook.com.br>, <facebook.cn>, <facebook.co>, <facebook.eu>, <facebook.fr>, <facebook.de>, <facebook.hu>, <facebook.it>, <facebook.pk>, <facebook.es>, <facebook.com.tr>, <facebook.ua>, and <facebook.us>.
The Respondent is a domain investor and personal website builder. The disputed domain name was registered by the Respondent on September 21, 2018, through a privacy registration service. The disputed domain name at one time resolved to a website having a different URL that displayed the Complainant’s logo and content apparently from the Complainant’s official website, together with links relating to the Complainant’s Portal devices. The website disclaimed association with the Complainant. More recently the disputed domain name has been redirected to a website at a different URL concerned with class action settlements.
A cease, desist, and transfer letter was sent by the Complainant to the Respondent on December 13, 2018, to which the Respondent replied on December 14, 2018, with an explanation elaborated on in section 5.A, that was not accepted by the Complainant. The Complainant sent a further cease, desist and transfer letter to the Respondent on December 17, 2018.
5. Parties’ Contentions
The Complainant’s contentions include the following.
The Complainant contends that it has rights in the trademark FACEBOOK, to which the disputed domain name is confusingly similar. The disputed domain name wholly incorporates the Complainant’s trademark, prefaced with the term “portal”, which refers to the Complainant’s hands free video calling device. The term “portal” does not prevent, but reinforces, confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant asserts prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been authorised to use the Complainant’s trademark in any way. The Respondent would be unable to demonstrate any rights or legitimate interests in the disputed domain name. The Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services because it has been redirected to the website “www.restrictable.com”, which displayed the Complainant’s logo, images, and text copied from the Complainant’s official website, together with links relating to the Complainant’s products. Later the disputed domain name was redirected to the website “www.settlementinsider.com”, providing unrelated advertising and not constituting bona fide use.
The Complainant says the Respondent is not commonly known by the disputed domain name, which is not in noncommercial or fair use.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. There has been registration in bad faith because the Complainant’s trademark is famous worldwide, and the impending launch of Facebook Portal was widely commented upon by the press in advance of the registration of the disputed domain name. It is inconceivable that the Respondent was unaware of the Complainant and its trademark, particularly as the disputed domain name was redirected initially to a website mimicking the Complainant’s website.
The Complainant submits that the Respondent has engaged in a pattern of the registration of domain names that infringe other well-known third-party trademarks, and the Complainant has produced a list of such domain names registered by the Respondent.
The Complainant says it regards as implausible the Respondent’s explanation, contained in the reply dated December 14, 2018, to the Complainant’s cease, desist, and transfer email letter, that the disputed domain name refers to “portalface-book”. The Complainant says “Portalface EP” is a music album by a little-known band called Digital Connection, from Denver, Colorado, United States.
The Complainant says the Respondent’s bad faith is further compounded by the registration of the disputed domain name through a privacy service to conceal its identity.
The Complainant says it is unlikely that the disputed domain name, particularly since it incorporates a famous trademark, was registered for genuine speculative purposes rather than to target the trademark owner.
The Complainant says there has been use of the disputed domain name in bad faith with intent to capture Internet users through confusion with the Complainant’s trademark for commercial gain. The confusion would be enhanced by the content of the website to which the disputed domain name initially resolved, which had a similar “look and feel”, including layout, colour scheme, text, and images, and with the Complainant’s trademark and logo, to the Complainant’s own website. The presence of a disclaimer on the resolving website does not negate bad faith and may be taken as an admission by the Respondent of the potential for confusion with the Complainant.
The Complainant says the disputed domain name has been redirected to a different website more recently, which displays advertising links and is further evidence of use in bad faith for commercial gain by confusion with the Complainant and its trademarks.
The Complainant has cited previous decisions under the Policy, to some of which the Complainant was a Party, that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not submit a formal reply to the Complainant’s contentions.
An informal email from the Respondent to the Center, dated February 9, 2019, made points that may be summarised as follows.
The Respondent is a domain investor and website builder. He found a song called “Portalface” and intended to build a website portraying a collection of “portalfaces”, being people who met certain criteria.
The disputed domain name was registered on September 21, 2018, whereas “www.portal.facebook.com” was launched by the Complainant in October 2018.
The Respondent did not intend to mislead visitors. When he knew about Facebook Portal, he redirected the disputed domain name to a website having nothing to do with Facebook, in order not to mislead visitors, and added a disclaimer. The redirection was changed after the receipt of the letter from the Complainant’s lawyers.
Other domain names the Respondent has registered in the past, such as <amexcard.cn>, are irrelevant because they are unrelated to Facebook, which in any case is not famous in China and not used there. The Respondent has not previously registered domain names incorporating “facebook”.
The Respondent asserts reverse domain name hijacking by the Complainant.
6. Discussion and Findings
A. Procedural Matters
The original Complaint named a privacy service as the Respondent. The Registrar disclosed the underlying registrant to be Qian Mengdan and the amended Complaint added that name as the Respondent. Paragraph 1 of the Rules states that “the holder of a domain-name registration against which a complaint is initiated” is the Respondent. In the exercise of its discretion (section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), the Panel determines the Respondent to be solely Qian Mengdan.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Center acknowledged receipt of the Respondent’s email of February 9, 2018, by referring to February 28, 2018, as the date for receipt of a formal Response. The Center’s email included the clause “if we do not receive any further communication from you by the due date for Response, we shall regard the
above-referenced communication as your Response”. Accordingly the Respondent’s email of February 9, 2018, will be taken fully into account.
B. Identical or Confusingly Similar
The Panel is satisfied by the copies of documentary evidence produced that the Complainant has rights in the trademark FACEBOOK as required under the Policy.
The disputed domain name is <portalfacebook.com>, in which the Complainant’s trademark is clearly recognisable. The prefix “portal” is a word meaning a door or gateway that, in the context of the Internet, can refer to a website giving access to a variety of resources. The word “portal” prefixed to the Complainant’s trademark in the disputed domain name is found not to obviate confusing similarity. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant states that the Respondent has not been authorised to use the Complainant’s trademark in any way and accordingly has no rights or legitimate interests in respect of the disputed domain name. The Respondent may seek to rebut the Complainant’s prima facie case in the terms of paragraph 4(c) of the Policy in order to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; 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.”
The Respondent’s claimed intention to build a website portraying a collection of “portalfaces”, inspired by music called “Portalface EP”, is no more than a bare assertion, unsupported by any evidence, and cannot be accepted as evidence of intended bona fide use of the disputed domain name for the supply of goods or services. The redirections of the disputed domain name to the website “www.restrictable.com”, which references the Complainant’s products, and later to “www.settlementinsider.com”, which promotes unrelated services and products, are found not to amount to use for a bona fide supply of goods or services.
There is no evidence that the Respondent, as Qian Mengdan, has ever been known, personally or as a business or organisation, by the disputed domain name. There is no evidence the disputed domain name is in use for any fair or noncommercial purpose.
The Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The Respondent claims in effect that the disputed domain name <portalfacebook.com> was registered on September 21, 2018, whereas the website “www.portal.facebook.com” was launched by the Complainant “nearly a month” later. The comparison required in any assertion of priority, however, is not between domain names, but between the disputed domain name and the Complainant’s trademark FACEBOOK, which was first registered more than 12 years earlier. The element “portal” in this case does not enter into the comparison.
In any case, the emergence of the Complainant’s Facebook Portal product was public knowledge before the disputed domain name was registered. A screen capture produced by the Complainant of the website “www.androidpolice.com” datelined August 22, 2018, contained an article headed “Facebook speech recognition software ‘Aloha’ revealed, ‘Portal’ confirmed as name for smart speaker / display”. Another screen capture datelined August 22, 2018, from the website “www.digit.in”, was headlined “Hidden code confirms Facebook ‘Portal’ Smart Speaker and ‘Aloha’ voice recognition tool”. A screen capture of the website “www.slashgear.com” contained a news item headed “Facebook Portal video chat device launching next week”. Notably that item was datelined September 20, 2018, being the day before the disputed domain name was registered. The reasonable inference is that emerging news of the Complainant’s product Facebook Portal precipitated the decision to register the disputed domain name containing the trademark FACEBOOK.
The Respondent’s account of events is further undermined by the structure of the disputed domain name. The Respondent’s email of February 9, 2018, refers to the disputed domain name as “portalface book.com” in one place and as “portalface-book.com” in another place. Those constructions, seeking to distance the word “face” from “book”, are crucially at variance with the disputed domain name <portalfacebook.com> in which “facebook” remains intact.
The Respondent’s ultimate intention for the disputed domain name need not be known. It has been used for redirection to a website not belonging to the Complainant, “www.restrictable.com”, that nevertheless displays images and text relating to the Complainant’s products, with links to Amazon, the reasonable inference being that third parties stand to gain commercially from such referrals, and that commission may be paid in return. The Respondent apparently owns “www.restrictable.com” because his email of February 9, 2019, contains the passage “I write a disclaimer on the website: this site is NOT owned or affiliated with Facebook.com”. The email also says “I received a letter from lawyers of facebook ... so i redirected this domain to another website of mine which has nothing to do with any products of facebook”, thereby confirming, in the context, the Respondent’s ownership of “www.settlementinsider.com”. The screen capture produced by the Complainant of “www.settlementinsider.com” shows information about class actions that members of the public might peruse to see if they could qualify for a settlement. It also carries an advertisement for a Paris holiday resort. The use of such a disclaimer on the website at the disputed domain name is self-evidently not sufficient to avoid a likelihood of confusion by associating the Complainant’s trademark with the disputed domain name.
On the evidence, the Panel finds the disputed domain name to have been used intentionally to attract Internet users by confusion with the Complainant’s trademark for commercial gain, which need not necessarily accrue to the Respondent, within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds on the balance of probabilities that whatever the Respondent’s ultimate intentions for the disputed domain name, which he says are undecided, it was registered with the intention that it would be monetised in the interim, that is to say, harnessed in some revenue earning capacity.
The Complainant has produced WhoIs records of seven domain names previously registered by the Respondent, who has not denied them, other than to say they have no connection with the Complainant. Most, such as <lloydsnank.com>, contain spelling errors typically used in typosquatting schemes. Two, however, <amexcards.cn> and <amexcreditcards.cn>, both registered on November 11, 2018, incorporate the trademark AMEX in a format in which the respective trademark owner might reasonably have wished to construct a domain name. In the terms of paragraph 4(b)(ii) of the Policy, the Respondent is found to have registered the disputed domain name to prevent the Complainant from doing so, and to have engaged in a pattern of such conduct, further constituting registration in bad faith.
On the totality of the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
The use of a privacy service is not, in and of itself, evidence of bad faith intent, and it is noted that the Respondent was contactable and acknowledged the Complaint promptly.
The Complainant having prevailed, the Respondent’s claim of reverse domain name hijacking need not be considered.
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 <portalfacebook.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 15, 2019