WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. TheLord Above
Case No. D2019-2038
1. The Parties
The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is TheLord Above, United States.
2. The Domain Name and Registrar
The disputed domain name <facebookcourt.com> 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 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. The Center received several email communications from the Respondent but did not receive a formal response. Accordingly, the Center notified the Parties that it was proceeding to the panel appointment stage.
The Center appointed William R. Towns as the sole panelist in this matter on October 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 a leading and well-known provider of online networking services. The Complainant adopted and has used the mark FACEBOOK as an indicator of source for its services since 2004, and owns multiple registrations for the FACEBOOK mark in the United States and other jurisdictions around the world, including the following:
− United States, Registration No. 3041791, registered on January 10, 2006 (first use in commerce in 2004);
− United States, Registration No. 3122052, registered on July 25, 2006 (first use in commerce in 2004);
− European Union, Registration No. 004535381, registered on June 22, 2011.
The Complainant also is the holder of numerous domain names reflecting its FACEBOOK mark.
The Complainant has experienced substantial growth since it began offering its online networking services under the FACEBOOK mark, growing from 1 million active users by the end of 2004 to 2.27 billion users as of September 2018. The Complainant’s website “www.facebook.com” is consistently ranked among most visited website in the world, and UDRP panels have recognized the Complainant’s FACEBOOK mark one of the most famous online marks in the world. See Facebook, Inc. v. Franz Bauer, WIPO Case No. D2010-1247; Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004.
The disputed domain name was registered on July 27, 2017. The disputed domain name does not resolve to an active website. Upon becoming aware of the Respondent’s registration of the disputed domain name, the Complainant’s representative dispatched a cease and desist letter to the Respondent, to which the Complainant received no reply.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK mark. The Complainant observes that the disputed domain name incorporates the Complainant’s FACEBOOK mark in its entirety, and asserts that the addition of the generic term “court” does not preclude a finding of confusing similarity under the first element of the Policy. The Complainant further notes that the generic Top-Level Domain (“gTLD”), in this case “.com”, in generally disregarded when assessing the confusing similarity of the disputed domain name to the Complainant’s mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name and has never been licensed or otherwise authorized to use the Complainant’s FACEBOOK mark. The Complainant asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that its FACEBOOK mark is highly distinctive and famous around the world, and has been continuously and extensively used since 2004. The Complainant cites Facebook, Inc. v. He Wenming, supra (holding that “the Complainant and its FACEBOOK trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the world for its online social networking services”). The Complainant contends that the Respondent had actual and constructive knowledge of the Complainant’s rights in the FACEBOOK mark when registering the disputed domain name.
The Complainant maintains, given the Complainant’s renown worldwide, that it would be inconceivable for the Respondent to assert that the disputed domain name was registered for any legitimate purposes. The Complainant further contends that the Respondent provided false contact details when registering the disputed domain name, including the identity of the registrant (“TheLord Above”) and false or fictitious contact information, namely the postal address.
The Complainant reiterates that the Respondent has never actively used the disputed domain name, and submits that the Respondent’s passive holding of the disputed domain name does preclude a finding of bad faith given the overall circumstances of the case, particularly in light of the distinctiveness and renown of the Complainant’s FACEBOOK mark. The Complainant further contends that the Respondent’s failure to reply to the Complainant’s cease and desist letter is indicative of the Respondent’s bad faith.
B. Respondent
Despite having sent several email communication to the Center, the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain names, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <facebookcourt.com> is confusingly similar to the Complainant’s FACEBOOK mark, a well-known mark in which the Complainant has demonstrated rights through registration and extensive use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
In this case, the Complainant’s FACEBOOK mark is clearly recognizable in the disputed domain name.2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 gTLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s FACEBOOK mark. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the well-known Complainant’s mark, and which the Respondent by all appearances has passively held since its registration. The Panel considers the Respondent’s non-use of the disputed domain name in the circumstances of this case an additional factor that underscores the Respondent’s lack of rights or legitimate interests in the disputed domain name. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and the Complainant’s well-known FACEBOOK mark when registering the disputed domain name. The Panel finds that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant’s trademark rights. Although the Respondent currently is passively holding the disputed domain name, Internet users encountering the disputed domain name could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
In light of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes from the attendant circumstances that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s FACEBOOK mark. The Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s FACEBOOK mark is distinctive and well known, and it is clear beyond cavil that the Respondent was aware of the Complainant and the Complainant’s well-known mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent.
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 <facebookcourt.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 14, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.