WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Domain Administrator, PrivacyGuardian.org / Pavel Cerny
Case No. D2019-0963
1. The Parties
The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Administrator, PrivacyGuardian.org, United States / Pavel Cerny, Czech Republic.
2. The Domain Names and Registrar
The disputed domain names <bitcoinfacebook.info> and <bitcoinfacebook.org> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 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 May 2, 2019.
On May 1, 2019, the Respondent sent an email communication to the Center, stating “Hi, what do you want from me?”
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 3, 2019.
On May 9, 2019, the Respondent sent an email communication to the Center, stating “we are willing to transfer both of the disputed domain names free of charge from our control to the Complainant, in the hope that this will be sufficient to end this dispute. Despite the fact that we have paid registration fees and the domain names have not been registered for malicious intent or trademark abuse. We are prepared to transfer the domain names immediately after we receive your/complainant's consent.” The Center sent the possible settlement email to the Parties. On May 13, 2019, the Complainant sent an email communication to the Center, stating that it did not intend to request a suspension of the proceedings.
In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel appointment process on May 24, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 6, 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 2 billion users worldwide.
The Complainant is the owner of the trademark FACEBOOK and has many trademark registrations worldwide, e.g., United States Trademark Registration No. 3,122,052 (registered on July 25, 2006), and European Union Trademark Registration No. 005585518 (registered on May 25, 2011), (Annex 11 to the Complaint).
The Complainant further owns and operates various domain names like <facebook.com>.
The disputed domain names were both registered on February 6, 2019.
The Respondent is an individual from Czech Republic, who has used a privacy service provider for registration of the disputed domain names (for the ease of reference, both, the individual and the privacy service provider are jointly referred to in the following as “the Respondent”).
The disputed domain names are linked to websites on which other domain names apparently infringing third party trademarks are being offered for sale (Annex 13 to the Complaint).
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 names at no costs (Annex 12 to the Complaint). This approach was not accepted by the Respondent. Instead, the Respondent offered to sell the disputed domain names to the Complainant (Annex 3 to the Complaint).
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are confusingly similar to the Complainant’s FACEBOOK trademark.
The Complainant argues that the mere difference between the disputed domain names and the Complainant’s trademark is the addition of the term “bitcoin”. 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 names. 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 names in bad faith. The Complainant particularly believes that due to the wide recognition of the FACEBOOK trademark as one of the most well-known trademarks worldwide, the Respondent must have been aware of the trademark when registering and using the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 names are 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 names; and
(iii) the disputed domain names have been registered and are 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 Complainant’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”).
Further, it is stated that the Panel will, where appropriate, decide consistent with the consensus views captured in WIPO Overview 3.0.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark FACEBOOK by virtue of a large number of trademark registrations, including in the European Union, where the Respondent is apparently located.
The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark, as they fully incorporate 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 addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the descriptive term “bitcoin” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s FACEBOOK trademark.
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 names.
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 names 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 names 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 names.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. 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 names.
Quite the opposite, the Panel is rather convinced that the Respondent is well aware that the composition of the disputed domain names carries a risk of implied affiliation or endorsement (see section 2.5.1 of the WIPO Overview 3.0) in relation to the Complainant’s business and FACEBOOK trademark.
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 names 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 to disrupt the Complainant’s business.
In this regard, the Panel notes once again the notoriety 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 names.
The Panel further believes that the Respondent’s offer to sell the disputed domain names to the Complainant is another indication for its bad faith. This assessment is supported by the fact that the Respondent additionally offered other domain names apparently infringing well-known third party trademarks on the websites linked to the disputed domain names (Annex 13 to the Complaint).
All in all, the Panel cannot conceive of any good faith use of the disputed domain names 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 names were both registered and are 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 names, <bitcoinfacebook.info> and <bitcoinfacebook.org>, be transferred to the Complainant.
Date: June 19, 2019