WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Temp name Temp Last Name, Temp Organization / Funda Yüktaşır/Şen
Case No. D2019-0483
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 Temp name Temp Last Name, Temp Organization / Funda Yüktaşır/Şen of Istanbul, Turkey, represented by Aksan, Turkey.
2. The Domain Name and Registrar
The disputed domain name <facebookpartner.net> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2019, 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 that Turkish is the language of the Registration Agreement.
On March 8, 2019, the Center sent a communication to the Parties, in English and Turkish, regarding the language of the proceeding. On March 11, 2019, the Complainant confirmed its request that English be the language of the proceeding. By email of March 13, 2019, the Respondent requested the proceedings to be conducted in Turkish.
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 March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. The Response was filed with the Center on April 3, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on April 9, 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 a leading online social networking service, which was founded in 2004. It has more than 1 billion users worldwide, including almost 40 million in Turkey.
The Complainant is the owner of the trademark FACEBOOK, used around the world. The Complainant is the owner of many trademark registrations worldwide, e.g., United States Trademark Registration No. 3,122,052 (registered on July 25, 2006), and Turkish Trademark Registration No. 2008 20994 (registered on March 10, 2009), (cf. Annex 11 to the Complaint).
The Complainant further owns and operates a large number of domain names like <facebook.com> and <facebook.com.tr>.
The disputed domain name was created on December 19, 2015.
The Respondent is an individual from Istanbul, Turkey. She appears to be the founder of “WediaCorp Multi Channel Network”, a company or organization which is supposed to provide marketing services for Internet-based businesses.
Prior to initiation of the administrative proceedings, the Complainant tried to solve the dispute amicably by sending a cease-and-desist letter and asking for a transfer of the disputed domain name at no costs. This approach was refused by the Respondent. However, the Respondent indicated in her communication with the Complainant that she would be willing to transfer the disputed domain name for a “reasonable price” without, however, indicating what price she considered to be “reasonable”.
At the time of the decision, the disputed domain name did not resolve to an active website.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark.
The Complainant argues that the mere difference between the disputed domain name and the Complainant’s trademark is the addition of the term “partner”. The Complainant is of the opinion that this difference does not negate the confusing similarity with its trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the FACEBOOK trademark in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the wide recognition of the FACEBOOK trademark, the Respondent was or should have been aware of the trademark when registering and using the disputed domain name.
The Respondent requests the denial of the Complaint.
In essence, the Respondent acknowledges that the Complainant has long-standing rights in the trademark FACEBOOK. However, it is alleged that due to an extensive use in daily life, the Complainant’s trademark has become a rather colloquial expression. It is further alleged that the disputed domain name has been registered for the sole purpose of creating a social platform in near future for people who are doing business with the Complainant. Finally, it is alleged that the Respondent has not tried to commercialize the disputed domain name in the past four years, particularly by not offering the disputed domain name for sale. Hence, the Respondent is of the opinion that the Complainant has not provided sufficient evidence for a finding of bad faith registration and use.
6. Discussion and Findings
6.1. Language of the Proceedings
Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and to request the submission of costly and time-consuming translations of documents by the Complainant. The Respondent made use of its right to respond to the Complaint in Turkish language. By doing so, and in light of the Parties’ communications prior to the administrative proceedings, the Panel concludes that the Respondent must be well able to read and understand the English language.
In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English.
Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark FACEBOOK by virtue of various trademark registrations, including trademark registrations covering protection in Turkey, where the Respondent appears to be located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it fully incorporates the mark FACEBOOK. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The mere addition of the dictionary term “partner” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s FACEBOOK trademark.
The Respondent’s allegation that the Complainant’s trademark FACEBOOK has become a colloquial expression and, hence, should not be protected as an exclusive right, is assessed by the Panel as a merely self-serving and unfounded assertion by the Respondent. The Respondent did not provide anything that could support such finding.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s FACEBOOK trademark in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In this regard, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
Particularly, the Respondent’s mere allegations concerning the intended future use of the disputed domain name remain unfounded and are assessed by the Panel as self-serving and insufficiently supported assertions only.
In addition, the Panel notes the composition of the disputed domain name which carries a risk of implied affiliation or endorsement.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel believes that the Respondent deliberately attempted to freeride on the goodwill of the Complainant’s FACEBOOK trademark, for illegitimate commercial gain and/or to disrupt the Complainant’s business.
In this regard, the Panel notes the reputation of the Complainant’s trademark FACEBOOK. The Panel is convinced that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.
The Panel further believes that the Respondent’s attempt to highlight her willingness to rather sell the disputed domain name to the Complainant for a “reasonable price” without, however, indicating what price she considered to be “reasonable”, is another indication for the Respondent’s ill intentions.
The fact that the disputed domain name is currently inactive does in view of the Panel not prevent a finding of bad faith.
All in all, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent, not related to the FACEBOOK trademark owned by the Complainant. The Panel is rather convinced that this is a typical cybersquatting case, which the UDRP was designed to combat.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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.net> be transferred to the Complainant.
Date: April 23, 2019