WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Protection of Private Person, REG.RU Protection Service / Nikita Sakhnenko
Case No. D2019-0870
1. The Parties
The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Protection of Private Person, REG.RU Protection Service, Russian Federation / Nikita Sakhnenko, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <bitcoinfacebook.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email communication in English and Russian regarding the language of the proceedings. The Complainant requested English as the language of the proceedings on April 29, 2019 and filed an amended Complaint on May 2, 2019. The Respondent did not reply on the language of the proceedings.
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 May 7, 2019.
The Center received an email communication from the Respondent on May 13, 2019 consenting to the transfer of the Domain Name, but without further action necessary to effect the transfer.
On May 15, 2019, the Complainant advised that it did not consent to any suspension of the proceedings and requested that an administrative panel be appointed to render a decision on the merits.
On May 16, 2019, the Center received two email communications from the Respondent confirming his desire to transfer the Domain Name and indicating that the Domain Name was not acquired for any commercial purposes.
On July 30, 2018, the Complainant confirmed that it did not consent to any suspension of the proceedings and requested that an administrative panel be appointed to render a decision on the merits.
In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of the Panel appointment process.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 3, 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 world’s leading provider of online social networking services. The Complainant holds trademark registrations for the FACEBOOK trademark, such as:
- International Registration No. 1075094, registered on July 16, 2010;
- United States Trademark Registration No. 3041791, registered on January 10, 2006; and
- European Union Trademark No. 004535381, FACEBOOK, registered on 2June 22, 2011 (classes 35 and 38).
The Respondent registered the Domain Name on April 26, 2018. The Domain Name does not resolve to any active website.
On February 25, 2019, the Complainant sent a cease and desist letter to the Respondent informing him that the Respondent’s registration of the Domain Name violated the Complainant’s rights in the FACEBOOK trademark and invited the Respondent to transfer the Domain Name to the Complainant. The Respondent did not reply to the cease and desist letter.
5. Parties’ Contentions
The Complainant contends that it is the world’s leading provider of online social networking services. The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant’s trademark because the Domain Name incorporates the Complainant’s well-known FACEBOOK trademark along with the term “bitcoin”, which does not detract from confusing similarity between the Domain Name and the trademark. The Complainant asserts that the generic Top-Level Domain (“gTLD”) “.com” should be excluded from assessment of confusing similarity between the mark and the Domain Name.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use its trademark. The Complainant contends that the Respondent is not commonly known by the Domain Name. The Complainant claims that the Respondent is not making a legitimate use of the Domain Name because the Domain Name does not resolve to any active website.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant claims that the registration of the Domain Name that includes the Complainant’s famous FACEBOOK trademark constitutes registration in bad faith because it carries a high risk of an implied affiliation between the Complainant and the Domain Name. Further, the Complainant states that the Respondent’s use of a privacy service to hide his identity also supports bad faith registration. The Complainant contends that the Respondent’s failure to respond to the Complainant’s cease and desist letter is another indication of bad faith. The Complainant argues that there can be no good faith use of the Domain Name by the Respondent. The Complainant claims that the Respondent’s non-use of the Domain Name would not prevent a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Instead, the Respondent submitted several informal emails that read as follows:
In his May 13, 2019 email, the Respondent wrote: “Good afternoon, I recently received a letter complaining about the domain name “bitcoinfacebook.com”. I would like to agree to the transfer or cancellation of the controversial domain name “bitcoinfacebook.com”.
The reg.ru domain name registrant agrees to cancel and transfer the domain name only if you are ready for
In his May 16, 2019 email, the Respondent wrote: “I would like to clarify a few nuances, the domain was purchased at reg.ru, the mail email@example.com was indicated only for registration, so I did not visit it. My current mail is firstname.lastname@example.org - for this reason I did not see the letters that came to me at the email@example.com
The domain was not acquired for commercial purposes, it is already more than six months inactive. In addition to the mail, the domain registrar and you had my mobile phone, you could contact me with it, so as not to waste your time and not send the complaint by mail.
I would like to resolve this issue as soon as possible, I am ready to refuse the domain name or transfer it to the applicant.” A later communication saying: “Can you please give an example of a form for resolving a dispute?
I also ask you to give me the applicant's email to contact him”.
6.1. Language of the proceeding
Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine language of the administrative proceeding based on the circumstances of the case.
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Complainant requested that English be the language of the administrative proceeding for the following reasons: (1) The Respondent is familiar with the English language because the Domain Name is comprised of the FACEBOOK trademark and the term “bitcoin”, both of which are in Latin characters; (2) It would be unfair to require the Complainant to translate into Russian because it would result in additional expenses for the Complainant and cause unnecessary delay of the proceeding.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, …(vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.”1 .
The Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name in Latin characters. Second, the Respondent sent several emails in English to the Registrar during this proceeding.
It will be unfair to cause the Complainant to translate the Complaint and accompanying documents into Russian because it will put an undue financial burden on the Complainant and delay resolution of the dispute. At the same time, it will not be unfair to the Respondent if the proceeding is conducted in English because the Respondent appears to understand English and because the Respondent did not object to use of English as the language of this proceeding despite being informed about his right to do so.
Considering the facts and law stated above, the Panel grants the Complainant’s request that English be the language of this proceeding.
6.2. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview 3.0, “[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”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the FACEBOOK trademark.
The Domain Name consists of the Complainant’s FACEBOOK trademark, the word “bitcoin” and the gTLD “.com”. Where a domain name incorporates the entirety of a trademark and where the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to the mark for purposes of UDRP standing.2 Because the FACEBOOK trademark is recognizable within the Domain Name, the Domain Name is confusingly similar to the Complainant’s trademarks.3 The addition of the term “bitcoin” does not prevent finding of confusing similarity. Because “[t]he applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test,”4 the Panel finds that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark.
Thus, the Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.5
The following circumstances, in particular, but without limitation, if found by the panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii):
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
First, the Respondent has not been using the Domain Name in connection with a bona fide offering of goods or services. The Complainant contends that it did not license or otherwise allowed the Respondent to use the Complainant’s FACEBOOK trademark.
Second, the Respondent has not made or is not currently making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy, since the Domain Name, which incorporates the Complainant’s trademark in their entirety, does not resolve to an active website. While the Respondent’s May 16, 2019 email claimed that the Respondent did not acquire the Domain Name for any commercial purposes, he failed to explain the nature of any possible legitimate noncommercial or fair use for which he was going to use the Domain Name.
Third, the Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name. The WhoIs information on file shows that the Respondent identified itself as Nikita Sakhnenko.
The Panel therefore finds that the Complainant has made out a prima facie case regarding the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith because incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so, may create a presumption of bad faith6. Here, the Respondent provided no explanation for his good fairth registration of the Domain Name that includes the famous FACEBOOK trademark. The Panel can also find none.
Although the Domain Name does not resolve to any active websites, passive holding of the Domain Name does not prevent finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.7 Among the factors applied to passive holding doctrine are “(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 (the implausibility of any good faith use to which the domain name may be put”.8 The following circumstances in this case support a finding of bad faith: (1) the Complainant’s FACEBOOK trademark is well-known around the world; (2) the Respondent failed to submit any substantive response in this case or rebut the Complainant’s arguments. Although in his May 16, 2019 email the Respondent contended that he did not acquire the Domain Name for commercial purposes, he provided no explanation of any intended good faith use of the Domain Name. Coupled with the Respondent’s purported willingness to transfer the Domain Name to the Complainant, it indicates that it is unlikely that the Respondent intended to use the Domain Name in good faith.
The Panel finds that there can be no plausible explanation for the Respondent’s choice of the Domain Name other than the Respondent’s intent to profit off the fame of the Complainant’s well-known FACEBOOK trademark. Moreover, the Panel finds that the Domain Name carries a high risk of implied affiliation between the Domain Name and the Complainant.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved.
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, <bitcoinfacebook.com> be transferred to the Complainant.
Date: June 13, 2019
1 Section 4.5.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).