WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Pei Rong Wong

Case No. D2019-1880

1. The Parties

The Complainant is Facebook, Inc., United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Registration Private, Domains By Proxy, LLC, US / Pei Rong Wong, Singapore.

2. The Domain Name and Registrar

The disputed domain name <facebookworks.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 6, 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.

The Center verified that 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 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Respondent did not file a formal Response. However, the Center received several email communications from the Respondent between August 15 and August 22, 2019. On August 23, 2019, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 28, 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 multinational information and technology company and provider of online social networking services. The Complainant is considered one of the world’s largest technology companies. The Complainant was founded in 2004 and currently employs almost 40,000 employees in almost 40 countries, including Singapore, where the Respondent is located. The Complainant’s social media network, Facebook, has over 2 billion monthly active users worldwide.

The Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the mark FACEBOOK, which it uses in connection with its social networking services. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:

- FACEBOOK, Singapore trademark registered under No. T0722265H on February 12, 2009, in classes 9, 38, and 42;

- FACEBOOK, US word mark registered with the United States Patent and Trademark Office (USPTO) on July 25, 2006, under number 3122052 in class38;

- FACEBOOK, European Union word mark registered with the European Union Intellectual Property Office (EUIPO) on April 29, 2008, under number 005722392 in classes 18, 25, and 28.

The Disputed Domain Name was registered by the Respondent on November 6, 2018. The Disputed Domain Name currently redirects to the URL “https://www.facebook.com/business/marketing-partners” on the Complainant’s own website. The Disputed Domain Name has been used in connection with the email address “[…]@facebookworks.com”. The email address was used to send the following message to undisclosed recipients:

“Hi there, I am […] from Facebook's Marketing Partnership. My job is to get in touch with business owners like yourself and find out how we can better help you with your business through Facebook. Depending on your business objectives we will put you in touch with the right people ranging from other fellow business owners, reputable partnering agencies or just designers. If you are keen to be a part of this program kindly assist me in answering this short survey: [url].”

On July 12, 2019, the Complainant’s lawyers sent a cease-and-desist letter to the Respondent, providing notice of the Respondent’s alleged infringing use of the Disputed Domain Name and demanding the transfer of the Disputed Domain Name to the Complainant. The Respondent did not reply to this cease-and-desist letter.

After the Complaint was filed, the Respondent offered to transfer the Disputed Domain Name. The Complainant replied that it would like to obtain a full decision, considering that this would be the easiest way to solve the matter with little or no further input from either party.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use, as it was being used as part of a fraudulent scheme to impersonate the Complainant, putting the security of Facebook users at risk. Also, according to the Complainant, the Respondent is in no way affiliated with or authorized by the Complainant and the Respondent cannot legitimately claim to be commonly known by the Disputed Domain Name. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s trademark rights and sought to impersonate or create confusion with the Complainant and its business as part of a fraudulent scheme.

B. Respondent

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

The Respondent issued several informal communications to the Center, claiming that he had not seen the emails in relation to the administrative proceedings before. The Respondent wrote that he was sorry for the trouble he had caused and indicated that he would like to transfer the Disputed Domain Name.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the Disputed 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 Disputed Domain Name; and

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

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are FACEBOOK trademarks in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant’s social networking services.

The Disputed Domain Name incorporates the Complainant’s FACEBOOK trademark in its entirety, merely adding the suffix “works”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the Disputed Domain Name, the additions of other terms would not prevent a finding of confusing similarity.

The Panel is of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjackenoutlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <download-limewire-now.com> was held to be confusingly similar to the LIME WIRE trademark).

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s FACEBOOK trademark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0 ).

The Complainant considers that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and/or services and that the Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. The Complainant considers that the Respondent’s use of the Disputed Domain Name to send emails to Facebook users was part of a fraudulent scheme, most likely phishing. The Complainant maintains that such use of the Disputed Domain Name for illegal activity can never confer rights or legitimate interests on the Respondent.

According to the information provided by the Registrar, the Respondent identified itself as “Pei Rong Wong”. The Panel agrees with the Complainant that this name bears no resemblance to the Disputed Domain Name. The Panel further agrees with the Complainant that emails sent from an email address under the Disputed Domain Name attempt to impersonate the Complainant. The attempt to impersonate the Complainant cannot support a legitimate claim of being commonly known by the Disputed Domain Name. Therefore, the Panel finds that the Respondent has not been commonly known by the Disputed Domain Name.

The Respondent further does not demonstrate to have acquired any relevant trademark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. The content of the sample email that was sent from the address “[…]@facebookworks.com” falsely suggests that the Respondent was part of the Complainant’s organization. The email is likely to mislead Internet users as to the source or sponsorship. The likelihood of confusion is increased by the fact that the Disputed Domain Name redirects to an official webpage of the Complainant. This redirection may make Internet users believe that the Disputed Domain Name is managed, sponsored, or endorsed by the Complainant.

In view of the above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith, and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

The Respondent has incorporated the Complainant’s FACEBOOK trademark in its entirety in the Disputed Domain Name, and is using the Disputed Domain Name to redirect to the Complainant’s official website. Moreover, an email sent from the email address “[…]@facebookworks.com” makes express reference to the Complainant. It is therefore inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

In the present case, the Panel is of the opinion that the Complainant’s trademark has a strong reputation and is widely known throughout the world, including in Singapore where the Respondent is residing.

As mentioned above, the Disputed Domain Name has been used to send emails that falsely suggest that the Respondent was part of the Complainant’s organization. These emails are likely to mislead Internet users as to the source or sponsorship of the message. It can be reasonably inferred that these emails are part of a fraudulent scheme to induce Facebook users into self-compromising their accounts.

Furthermore, the fact that, in the present case, the Respondent is redirecting the Disputed Domain Name to the Complainant’s own website further establishes bad faith, considering that the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the Complainant (see section 3.1.4 of WIPO Overview 3.0), and considering that the redirection increases the likelihood of confusion.

Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct). The Panel also notes that Respondent did not respond to Complainant’s cease-and-desist letter. Therefore, the Panel considers that the inference of bad faith is strengthened, in light of the cumulative circumstances indicating bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeed on the third and last element of the Policy.

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 Disputed Domain Name <facebookworks.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: September 3, 2019