WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Jurgen Neeme
Case No. D2019-2779
1. The Parties
The Complainant is Facebook, Inc., United States of America (“U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jurgen Neeme, Estonia.
2. The Domain Name and Registrar
The disputed domain name <fbgrab.net> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2019. On November 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 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 November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on December 18, 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, Facebook Inc, also commonly known as “FB”, is a provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its official website located at “www.facebook.com”. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide. Its main website is currently ranked as the 3rd most visited website in the world and the 14th in Estonia. With approximately 84.5 % of its daily active users outside the U.S. and Canada, Facebook’s social networking services are provided in more than 70 languages. Facebook is also available for mobile devices and ranked amongst the top “apps” in the market.
The Complainant is the owner of numerous domain names consisting of the trade marks FACEBOOK and FB including, <facebook.com> and <fb.com> as well as under country code top level domains such as <fb.fr> (France) and <fb.uk> (United Kingdom). The Complainant’s official page are available at:
FB is registered as a trade mark in many jurisdictions throughout the world. The following were submitted in evidence:
-U. S. Trade Mark Registration No. 4659777, FB, registered on December 23, 2014 (first use in commerce in 2014);
-European Union Trade Mark Registration No. 008981383, FB, registered on August 23, 2011, and
-International Trade Mark Registration No. 1075094, FACEBOOK Logo, registered on July 16, 2010.
(together, the “Trade Mark”).
The Domain Name was registered by the Respondent, an individual based in Estonia on June 29, 2017. As at September 9, 2019, the Domain Name was resolving to a website allowing Internet users to download videos on Facebook’s website and follow a tutorial on how to download such videos (the “Website”). The Website displayed the FACEBOOK Logo trade mark in its blue and white colours and also the name FB GRAB. The Complainant’s legal representatives sent a cease and desist letter to the Respondent on September 19, 2019. No response was received. The representatives then sent a take-down request to the hosting provider of the Website. Following this, the Website changed to that of a parking page with pay-per-click (“PPC”) advertising of third party products. The Domain Name is also listed for sale on the website “www.uniregistry.com” at a price of USD 4,930.
The Respondent has been involved in at least two other domain name dispute proceedings, one of which was brought by the Complainant:
- Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, email@example.com and Jay Neeme, WIPO Case No. D2019-1582 (in which the panel ordered the transfer of 23 domain names); and
- Verizon Trademark Services LLC v. Juergen Neeme, TheDomain.io, WIPO Case No. D2018-1125.
The Respondent’s name or email address is or was previously associated with other domain names including <wwwfacebook.fr>, <facebooks-com.us>, <facebookvideodownloader.us> and <facebooksearch.us>.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s FB trade mark in its entirety together with the descriptive term “grab”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) which in this case is “.net”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed 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 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 trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. The Respondent is not using Domain Name in connection with a bona fide offering of goods or services. As described above, the Website features sponsored links and before that it was offering Internet users tutorials on downloading videos to Facebook’s website and displaying the Complainant’s logo without authorisation. There was no disclaimer that the Website was not in any way connected to the Complainant. Further there is no evidence that the Respondent is commonly known by the Domain Name. Neither is the Respondent making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not in its response provided any explanation of its rights or legitimate interests in relation to the Domain Name and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Trade Mark is a well-known trade mark and very much associated with the Complainant. The Complainant has submitted press-reports to this effect. The fact that the content of the Website made explicit reference to the Complainant and taught Internet users how to download “Facebook Videos” is further evidence that the Respondent was aware of the Trade Mark. The Respondent also has been involved in previous UDRP proceedings brought by the Complainant involving 23 domain names which included the Complainant’s trade marks.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name features sponsored links and is also for sale for an amount clearly exceeding the costs directed related to the Domain Name. This is evidence that the Respondent has registered the Domain Name primarily for the purpose of selling as set out in paragraph 4(b)(i) of the Policy.
The Respondent in using the Domain Name to provide tutorials to download Facebook videos showed that he has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Trade Mark as to source, sponsorship, affiliation, or endorsement of his website pursuant to paragraph 4(b)(iv) of the Policy. This is confirmed by the fact that the Website changed after the Respondent received a cease and desist letter from the Complainant’s representatives.
Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fbgrab.net> be transferred to the Complainant.
Date: December 23, 2019