WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Whois Agent (320418873), Whois Privacy Protection Service, Inc. / Facebook Gaming
Case No. D2019-2146
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Agent (320418873), Whois Privacy Protection Service, Inc., United States / Facebook Gaming, Turkey.
2. The Domain Name and Registrar
The disputed domain name <gaming-partnerfacebook.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On September 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 4, 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 September 6, 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 September 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 4, 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 was founded in 2004 and is the world’s leading provider of online social networking services via its website available at “www.facebook.com”. The Complainant’s social network, Facebook has approximately 2.37 billion monthly active users and 1.56 billion daily active users on average worldwide. The Complainant also offers users to play games, watch gaming videos, or engage in gaming groups on Facebook through its Facebook Gaming program.
The Complainant is the owner of numerous trademark registrations in the term FACEBOOK in many jurisdictions throughout the world, including International Trademark Registration No. 1075094, FACEBOOK, registered on July 16, 2010, in international classes 9, 35, 36, 38, 41, 42 and 45, in which Turkey is designated. The Complainant is the owner of numerous domain names consisting of or including the FACEBOOK trademark under various generic Top-Level Domains as well as under various country code Top-Level Domains.
The disputed domain name was registered on May 23, 2019. The disputed domain name does not resolve to an active website but is used as an email address to conduct a phishing scheme.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights since it incorporates the Complainant’s FACEBOOK trademark in its entirety together with the descriptive terms “gaming” and “partner” separated by a hyphen.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Complainant has no prior business relationship with the Respondent whatsoever. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The disputed domain name has thus been used to send emails to Facebook users from the email address [...]@gaming-partnerfacebook.com, which purport to be sent by the Complainant. Facebook users who clicked on the “Confirm My Agreement” link were then redirected to “www.gaming-creators-facebook.com”, a website that mirrored Facebook’s gaming creator program (available at: “www.facebook.com/fbgaminghome/creators”) inviting Internet users to fill in a form in order to confirm that they had signed the Facebook Gaming Creator INTL Agreement.
The Complainant finally submits that the Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world. It has been continuously and extensively used since 2004 in connection with the Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide, the Complainant therefore submits that it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s FACEBOOK trademark at the time of registration of the disputed domain name. The Complainant asserts that the Respondent is using the disputed domain name as part of a phishing scheme to send emails impersonating the Complainant in order to obtain personal information from unsuspecting Facebook users who are led to believe that such emails originate from the Complainant. The Complainant infers that the disputed domain name is used as part of a broader fraudulent scheme to induce Facebook users into disclosing their confidential usernames and passwords, or their banking information, potentially exposing them to acts of financial fraud, which is clearly bad faith use under the UDRP.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <gaming-partnerfacebook.com> is confusingly similar (in the sense of the Policy) to the Complainant´s registered trademark FACEBOOK. The disputed domain name incorporates this mark in its entirety with the addition of the non-distinctive terms “gaming” and “partner”. The generic Top-Level Domain “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent is using the disputed domain name (described above and discussed below) the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the evidence on record of the longstanding of use of the Complainant’s trademark, and the distinctive nature of the mark FACEBOOK, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Complainant has submitted documentation that clearly evidences that the Respondent is using the disputed domain name for what appears to be a phishing scheme to deceive users or potential users of the Complainant’s gaming program by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This constitutes bad faith use under the Policy, see section 2.13 and 3.1.4 of the “WIPO Overview 3.0”.
Noting that the disputed domain name incorporates a registered and widely-known trademark, that no Response has been filed, that the disputed domain name is used for what appears to be a phishing scheme, that there appears to be no conceivable good faith registration and use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <gaming-partnerfacebook.com> be transferred to the Complainant.
Date: October 17, 2019