WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Robert Brooks
Case No. D2019-2121
1. The Parties
Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Robert Brooks, United States.
2. The Domain Name and Registrar
The disputed domain names <bacebook.net>, <connectnfacebook.net>, <facebmok.com>, <graphnfacebook.com>, <nsnfacebook.com>, and <vacebook.net> are registered with eNom, Inc.
The disputed domain name <facmbook.com> is registered with NameSilo, LLC.
The Registrars will collectively be hereinafter referred to as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On August 30, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On the same day, the Registrars transmitted by email to the Center their verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 25, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 15, 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
Complainant is a provider of online social networking services. Launched in 2004, Facebook now has over 2 billion monthly active users. Its main website is “ www.facebook.com”, currently ranked the seventh most visited website in the world, and the fifth most visited website in the United States, where Respondent lists his address of record.
Complainant owns several registrations for the FACEBOOK mark, including in the United States where Respondent lists his address of record. These include United States Registration No. 3041791 (registered on January 10, 2006); United States Registration No. 3122052 (registered on July 25, 2006); European Union Registration No. 004535381 (registered on June 22, 2011), and International Registration No. 772524 (registered on December 3, 2001).
The disputed domain names <bacebook.net>, <connectnfacebook.net>, <facebmok.com>, <graphnfacebook.com>, <nsnfacebook.com>, <vacebook.net> and <facmbook.com> were registered between September 24, 2014, and March 21, 2016.
Almost all of the disputed domain names either are or have been linked to sponsored web links. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain names are identical or confusingly similar to Complainants’ trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.
Specifically, Complainant contends that it owns the FACEBOOK mark, which is “highly distinctive and famous throughout the world”. Complainant contends that Respondent has incorporated versions of its well-known FACEBOOK mark or misspellings thereof into the disputed domain names, and otherwise merely added generic or descriptive terms to them. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain names, and rather has registered and is using them in bad faith, having simply acquired the disputed domain names for Respondent’s own commercial gain. Complainant further alleges that Respondent has engaged in a pattern of conduct that establishes bad faith under the UDRP.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Panel finds that they are. All of the disputed domain names contain obvious misspellings of Complainant’s well known FACEBOOK mark. This indicates a practice commonly known as “typosquatting”, where a domain name registrant deliberately registers common misspellings of a well-known mark in order to divert consumer traffic. Previous UDRP panels have routinely found typosquatted domain names like these to be confusingly similar for purposes of a finding under the UDRP. See Edmunds.com, Inc. v. Yingkun Guo, WIPO Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; seealso Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-0194.
Several of the disputed domain names also add descriptive wording that may be associated by consumers with Complainant or its social networking services.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less identical or confusingly similar for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; General Electric Company v. Recruiters, WIPO Case No. D2007-0584.
The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no rights or legitimate interests as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names, and Respondent has no license from, or other affiliation with, Complainants.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, almost all of the disputed domain names either are or have been linked to sponsored web links.
Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
The Panel further notes that Complainant has submitted evidence that Respondent has engaged in a pattern of registering domain names. This evidences also bad faith in accordance with paragraph 4(b)(ii).
A number of prior UDRP panels have found Complainant’s marks to be extremely well known. See, for example, Facebook Inc. v. Emma Boiton, WIPO Case No. D2016-0623 (finding FACEBOOK to be “one of the most famous online trademarks in the world”); and Facebook Inc., WhatsApp Inc., Instagram, LLC, Oculus VR, LLC v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2019-0150. Due to the extreme renown of Complainant’s FACEBOOK mark, the Panel finds strong evidence that Respondent was aware of Complainant’s rights when it registered the disputed domain names.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with 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 <bacebook.net>, <connectnfacebook.net>, <facebmok.com>, <graphnfacebook.com>, <nsnfacebook.com>, <vacebook.net>, and <facmbook.com> be transferred to Complainant.
Date: October 21, 2019