WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Isaias Grullon Sanchez

Case No. D2019-2327

1. The Parties

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

Respondent is Isaias Grullon Sanchez, United States.

2. The Domain Name and Registrar

The disputed domain names <facebookbitcoin.online>, <facebookbitcoin.org>, <facebookbitcoinpro.com>, <facebookbitcoin.technology>, <facebookcryptocurrency.exchange>, <facebookcryptocurrency.info>, and <facebookcryptocurrency.money> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2019. On September 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 2019, the Registrar transmitted by email to the Center its 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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. The Response was filed with the Center on October 13, 2019. On October 14, 2019, the Center emailed the Parties regarding possible settlement. On the same day, the Complainant informed the Center that it wishes to proceed with the case, and would like to obtain a full decision on the merits.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 17, 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 the world’s leading 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 one of the top ten most visited websites in the world, and in the United States, where Respondent lists his address of record. Complainant’s FACEBOOK mark is also listed by Interbrand Best Global Brands 2018 as one of the top ten most valuable brands in the world.

Complainant owns several registrations for the FACEBOOK mark, including in the United States where Respondent lists his address of record. These include U.S. Registration No. 3041791 (registered on January 10, 2006); European Union Registration No. 004535381 (registered on June 22, 2011), and International Registration No. 1075094 (registered July 16, 2010).

The disputed domain names are not currently linked to active websites. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain names <facebookbitcoin.online>, <facebookbitcoin.org>, <facebookbitcoinpro.com>, <facebookbitcoin.technology>, <facebookcryptocurrency.exchange>, <facebookcryptocurrency.info>, and <facebookcryptocurrency.money> are identical or confusingly similar to Complainant’s 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 its well-known FACEBOOK mark into the disputed domain names, and merely added descriptive terms to them. Complainant contends that Respondent lacks rights or legitimate interests 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.

B. Respondent

Respondent submitted a response to Complainant’s contentions, contending that Respondent “did not previously know the ICANN rules and regulations”. Respondent further asserted that the disputed domain names “were not used in any manner and were not sold to anyone”.

Under the Section marked “Consent to Remedy (Optional)”, Respondent wrote the following:

“Please allow domain names to expire on December 14, 2019. Domain names will not be used or sold.

Yes, by December 14, 2019 the disputed domain name(s).”

6. Discussion and Findings

A. Preliminary Statement

The Panel notes that Respondent has expressed a desire to settle this proceeding. In this regard, the Panel turns to Section 4.10 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states, in relevant part, that some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits. Reasons may include that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g.,in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP). In this regard, after receiving Respondent’s statement, on October 14, 2019, the Center contacted the parties to see if they wished to suspend the proceeding to explore settlement negotiations.

In a communication the same day, Complainant responded with a request that the Center “proceed with the case”, adding that it “would like to obtain a full decision on the merits”. The Center indicated that it would proceed to appoint the Panel. Under these circumstances, and as discussed herein, the Panel finds it appropriate to discuss and render a full decision.

B. Identical or Confusingly Similar

The Panel must first determine whether the disputed domain names <facebookbitcoin.online>, <facebookbitcoin.org>, <facebookbitcoinpro.com>, <facebookbitcoin.technology>, <facebookcryptocurrency.exchange>, <facebookcryptocurrency.info>, and <facebookcryptocurrency.money> 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. The disputed domain names all incorporate Complainant’s FACEBOOK mark and add descriptive wording that may be associated by consumers with Complainant and its online services, refencing online payment exchanges using bitcoin or other cryptocurrency. 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 section 1.8 of WIPO Overview 3.0 and, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (<microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (<walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (<ge-recruiting.com>).

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.

C. 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, Complainant.

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.

D. 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. In this case, Complainant has submitted evidence that Respondent has engaged in a pattern of registering domain names that incorporate well known marks, and include the descriptive term “bitcoin”, including <googlebitcoin.online>, <mcdonaldsbitcoin.info> and <walmartbitcoin.online.>. This evidences bad faith in accordance with paragraph 4(b)(ii).

A number of prior UDRP panels have found Complainant’s FACEBOOK mark to be extremely well known. See, for example, Facebook Inc. v. Bolton, WIPO Case No. D2016-0623 (finding FACEBOOK to be “one of the most famous online trademarks in the world”); and Facebook Inc., et. al. v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150 (transferring, inter alia, <facebgok.com>, <facebks.com>, <facebokep.com>, <faceboki.com>, <facebuki.com>, <facetagram.com>, <fbooklogin.com>, <thefacebok.com>). Although Respondent expressed in his response that he “did not previously know the ICANN rules and regulations”, due to the extreme renown of Complainant’s FACEBOOK mark, the Panel finds strong evidence that Respondent was aware of Complainant’s rights when he 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.

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 names <facebookbitcoin.online>, <facebookbitcoin.org>, <facebookbitcoinpro.com>, <facebookbitcoin.technology>, <facebookcryptocurrency.exchange>, <facebookcryptocurrency.info>, and <facebookcryptocurrency.money> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Date: October 28, 2019