WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. WhoisGuard, Inc. / Donna E. Fleming, Mansmann's Department Store

Case No. D2019-1777

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 WhoisGuard, Inc., Panama / Donna E. Fleming, Mansmann's Department Store, United States.

2. The Domain Name and Registrar

The disputed domain name <facebooksupport.email> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2019, the Registrar transmitted by email to the Center its verification response, which disclosed registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 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 29, 2019.

The Center verified that the original Complaint together with its amendment (together, the “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 August 2, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was August 22, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 23, 2019.

The Center appointed D. Brian King as the sole panelist in this matter (the “Panel”) on September 18, 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

A. The Parties

The Complainant was incorporated in the United States in 2004 and has become a leading international social media company. The Complainant is the owner of numerous trademarks consisting of and incorporating the term “Facebook,” the name of the Complainant’s social media service (Annex 7 to the Complaint). Facebook currently maintains an average of 1.56 billion daily active users; its social networking services are provided worldwide and in over 70 languages. According to information company Alexa, Facebook is the third most visited website in the world.

The Panel has no information about the activities of the Respondent, except as discussed below in relation to the disputed domain name.

B. The Mark

The Complainant first used the FACEBOOK mark in commerce in 2004 and currently holds registrations for the mark in multiple jurisdictions (Annex 10 to the Complaint). An illustrative, non-exhaustive list follows:

The Complainant is also the owner of numerous domain names consisting of or including the FACEBOOK trademark under various generic Top-Level Domains (“gTLDs”) as well as under various country code Top-Level Domains (“ccTLDs”) (Annex 6 to the Complaint).

C. The Domain Name

The disputed domain name, <facebooksupport.email> (the “Domain Name”), was registered on June 1, 2019. This is more than a decade after the Complainant first registered its FACEBOOK mark in 2006. The webpage associated with the Domain Name currently resolves to an error page (Annex 9 to the Complaint). However, as discussed below, there is evidence that the Domain Name has been used to send emails to the Complainant’s users from the address “[...]@violations.facebooksupport.email.”

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is identical or confusingly similar to its registered trademarks. In particular, the Complainant contends that the Respondent has simply appended the generic term “support” to the Complainant’s FACEBOOK mark, and that the addition of the gTLD “.email” does nothing to diminish the confusing similarity.

The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not licensed or otherwise permitted the Respondent to make any use of the FACEBOOK mark. The Complainant further asserts that it has no prior business relationship with the Respondent, and that the Respondent is not commonly known by a name corresponding to the Domain Name. In addition, the Complainant alleges that the Respondent is using the Domain Name as part of a fraudulent scheme to impersonate representatives of the Complainant. Such use of the Domain Name, according to the Complainant, is detrimental to its business, puts the security of Facebook users’ information at risk, and cannot possibly be viewed as conferring rights or legitimate interests on the Respondent in respect of the Domain Name.

Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant argues that its FACEBOOK mark is so well-known internationally that it is impossible that the Respondent would not have known of the Complainant’s rights in the mark when registering the Domain Name. Indeed, according to the Complainant, the content of the emails sent using the Domain Name shows actual knowledge of the Complainant’s rights on the Respondent’s part. The Complainant further submits that the Respondent’s use of a privacy protection service to conceal its identity when registering the Domain Name is additional evidence of bad faith registration. With respect to bad faith use, the Complainant argues that the Respondent has used the Domain Name for the purpose of impersonating the Complainant’s personnel and threatening users with suspension of their accounts. Those actions, the Complainant suggests, are part of a broader fraudulent scheme to gain access to Facebook users’ personal and financial information. Considered together, the Complainant argues, these facts plainly demonstrate bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it possesses rights in the FACEBOOK mark. The evidence shows that the Complainant registered the mark as early as 2006, having first used it in commerce in 2004. The Complainant has also shown that the FACEBOOK mark has attained international recognition – a conclusion endorsed in earlier cases involving the company (see, e.g., Facebook, Inc. v. PrivacyGuardian.org / Alberto Macias, WIPO Case No. D2018-0244; Facebook, Inc. v. Werner Gonzalez, WIPO Case No. D2017-2046).

The Domain Name entirely incorporates the Complainant’s FACEBOOK mark and appends to it the term “support.” Prior UDRP panels have consistently held that the addition of generic or descriptive words to a complainant’s trademark does not distinguish a domain name from the mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Lime Wire LLC v. David Da Silva / Conactprivacy.com, WIPO Case No. D2007-1168; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251). Meanwhile, the addition of the gTLD “.email” does nothing to prevent a finding of confusing similarity.

The Panel accordingly has no difficulty in finding that the Domain Name is confusingly similar to the Complainant’s FACEBOOK mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name.

The present Panel agrees with these holdings and finds that the Complainant has made out a prima facie case here. The Complainant has shown that it registered the FACEBOOK mark in multiple jurisdictions as early as 2006 – over a decade before the Respondent registered the Domain Name. Since that time, the evidence shows, the FACEBOOK mark has attained worldwide notoriety and recognition. Considering these facts, the Respondent must have been aware of the Complainant’s rights in the FACEBOOK mark when registering the Domain Name. Indeed, the content of the emails transmitted using the Domain Name – in which the Respondent impersonated a representative of the Complainant’s business, and threatened Facebook users with the suspension of their accounts – sufficiently establishes actual notice on the Respondent’s part. An example of one such email reads as follows (Annex 8 to the Complaint):

We’ve received reports that your account does not follow content policies of Pages Terms.

Before sharing on Facebook, make sure your content does not violate Facebook Community Standards.

Please use the link provided below to submit page activity appeal: https://apps.facebook.com/309047586700541

If you think this is a mistake, make sure you review page guidelines: https://www.facebook.com/page guidelines.php

This will be the last warning you receive, ignoring this notice will result your page being permanently suspended.

Sincerely,
Facebook

In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant or its business. The Panel also finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name.

In these circumstances, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence of its own, despite having been afforded the opportunity to do so. Accordingly, the Panel finds that the Complaint succeeds with respect to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out circumstances that constitute evidence of bad faith registration and use. These are merely illustrative, however, and other circumstances, on the facts of a particular case, may be found to evidence bad faith.

As already concluded above, the Domain Name is confusingly similar to the Complainant’s famous FACEBOOK trademark, and the Respondent must have been aware of the Complainant’s rights in the mark when registering the Domain Name. This suffices to create a presumption of bad faith registration. See section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As to bad faith use, while the Domain Name does not currently resolve to a website, the emails that the Respondent sent using the Domain Name represent an attempt to impersonate a representative of the Complainant’s business and mislead Facebook users. The Complainant alleges that those emails form part of a larger scheme perpetrated by the Respondent to obtain personal or financial information from Facebook users. That is a reasonable inference on the facts, but the Panel does not need to make a definitive finding in that regard in order to resolve this case. The Respondent’s illicit impersonation of the Complainant’s representatives in communications to the latter’s customers, by itself, suffices to establish bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel thus concludes that the Complainant has satisfied its burden with respect to the third element under paragraph 4(a) of the Policy as well.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <facebooksupport.email>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: October 1, 2019