WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Oneandone Private Registration, 1&1 Internet Inc / Phan Thanh Sang
Case No. D2019-1611
1. The Parties
The Complainant is Facebook Inc., United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Oneandone Private Registration, 1&1 Internet Inc., United States / Phan Thanh Sang, United States.
2. The Domain Name and Registrar
The disputed domain name <facebookstable.com> is registered with 1&1 IONOS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019. On July 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 July 16, 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 July 17, 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 July 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on August 19, 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 provides online social networking services used by over 2 billion people each month and owns a number of registrations for the FACEBOOK trademark, including United States Registration No. 3041791, issued on January 10, 2006 (alleging a date of first use in commerce in 2004). The Respondent registered the disputed domain name on May 13, 2019. Without the Complainant’s authorization, the Respondent used the disputed domain name to publish a website impersonating Facebook and that purported to promote algorithmic and blockchain solutions. This website included one of the Complainant’s figurative trademarks as that site’s favicon. The website also provided general information and various documentation on a so called “ICO Facebook Token” and, in particular, invited Facebook users to sign up to a purported pre-sale of Facebook tokens by providing their personal information (e.g. user name and email address).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. FACEBOOK is a well-known trademark, being the mark used to identify one of the most popular social media platforms in the world. The Complainant owns trademark registrations for the FACEBOOK mark that predate the registration of the disputed domain name. The disputed domain name incorporates the disputed domain name in its entirety. The inclusion of the additional word “stable” does not eliminate the confusing similarity.
B. Rights or Legitimate Interests
The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name for the following reasons.
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts, among other things, that:
- The Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise.
- The Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
- The Respondent was using the disputed domain name in connection with a fraudulent phishing scheme that sought to illegitimately collect the personal information of Facebook users for commercial gain.
- The Respondent cannot conceivably claim that he is commonly known by the disputed domain name, in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the FACEBOOK trademark and its exclusive association with the Complainant.
- The Respondent cannot assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy.
Because the Respondent failed to introduce evidence to rebut this prima facie showing, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain name in bad faith.
Because the Complainant’s mark is well-known, it is implausible to believe that the Respondent was not aware of that mark when it registered the disputed domain name. The Panel notes that the disputed domain name consists of the mark FACEBOOK in its entirety, along with the word “stable”, a word that the Complainant asserts likely refers to an attribute of cryptocurrency. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name.
Bad faith use is clear from the Respondent’s activities of using the disputed domain name to impersonate the Complainant and to collect email addresses in a scheme resembling phishing.
For these reasons, the Panel finds that the Complainant has successfully met this third Policy element.
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, <facebookstable.com> be transferred to the Complainant.
Evan D. Brown
Date: September 1, 2019