WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Domain Administrator, PrivacyGuardian.org / Josh Johnston
Case No. D2019-2973
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 Domain Administrator, PrivacyGuardian.org / Josh Johnston, United States of America.
2. The Domain Name and Registrar
The disputed domain names <facebooklibra.cash>, <facebooklibra.market>, <facebooklibra.trade> and <facebooklibra.win> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 10, 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 Respondent of the Complaint, and the proceedings commenced on December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. Respondent sent several messages regarding the Complaint, including a message, as noted below, on December 11, 2019, which the Panel accepts as Respondent’s response in this proceeding.
Pursuant to the response from Respondent, the Center sent a message to the parties the same day, asking the parties to alert the Center if they wished to pursue a settlement agreement. The Center advised specifically that unless Complainant requested a suspension of the proceeding by December 16, 2019, the Center would continue with the proceeding. The Center did not receive a request from Complainant to suspend the proceeding, nor did the parties notify the Center of any agreement to settle the proceeding.
After receiving a notice from the Center on January 6, 2020, Respondent sent an additional message the same day, again expressing a desire to “remove” or “transfer” the disputed domain names registrations, with follow up messages on January 8, 2020. The Center acknowledged the messages from Respondent, but noted that since the Center had not received a request for suspension from Complainant, the Center would proceed to panel appointment.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 15, 2020. 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 one of the world’s leading providers of online social networking services. Launched in 2004, Facebook now has over 2 billion monthly active users. Its main website, located at “www.facebook.com”, is currently ranked among the five most visited websites in the world. It is also among the most downloaded applications (or “apps”). On June 18, 2019, Complainant announced the launch of Libra, a “future digital currency” to be developed by Complainant and run by the Libra Association.
Complainant owns several registrations for the FACEBOOK mark, including in the United States where Respondent lists his address of record. These include, among others, U.S. Registration No. 3041791 (registered 2006) and European Union Registration No. 004535381 (registered 2011).
The disputed domain names <facebooklibra.cash>, <facebooklibra.market>, <facebooklibra.trade> and <facebooklibra.win> were registered on June 28, 2019.
The disputed domain names have been linked to pay-per-click websites as well as to a website offering services for users of social media, including competitors of Complainant. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain names <facebooklibra.cash>, <facebooklibra.market>, <facebooklibra.trade> and <facebooklibra.win> 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 various UDRP panels have found to be 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 the term “Libra”, which will likely be understood as referring to a proposed digital currency announced by Complainant. 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.
As noted above, Respondent sent several messages regarding the Complaint, including the following message, on December 11, 2019, which the Panel accepts as Respondent’s response in this proceeding:
I have received this notice and complaint that the four domains referenced have been requested to be transferred, and this is fine and agreeable with me and I do not wish to retain or to use these domains. I have notified my registrar that I wish to release these domains as I cannot do so manually while there is a hold placed on them (possibly from the complaint), and so the registrar has been notified that I agree to release/delete the domains as well.
The domains referenced are <facebooklibra.cash>, <facebooklibra.market>, <facebooklibra.trade> <facebooklibra.win>.
Please go ahead and complete transfer or removal of these domains, and if there is any setting on my registrar’s end that can assist this please let me know and I will be happy to make any settings on my end that need to be changed.
6. Discussion and Findings
A. Preliminary Issue
The Panel notes that Respondent has expressed a desire to settle this proceeding. In this regard, the Panel turns to section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), which states, in relevant part, that despite a consent to remedy, “a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits.”
Reasons may include that Complainant has not agreed to a consent decision, 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 December 11, 2019, the Center contacted the parties to see if they wished to suspend the proceeding to explore settlement negotiations.
Complainant declined to request a suspension of the proceedings, and the parties did not submit any formal settlement to the Center, which thus 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 on the merits.
B. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain names <facebooklibra.cash>, <facebooklibra.market>, <facebooklibra.trade> and <facebooklibra.win> 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 the term “Libra”, which, in addition to being a dictionary term, may be associated by consumers with a proposed digital currency announced by Complainant. Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary 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. 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. Rather, Respondent has expressed to the Center a desire to transfer or remove the disputed domain names from his ownership.
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. 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, the disputed domain names have been linked to pay- per- click websites, as well as to a website offering services for users of social media, including competitors of Complainant.
Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
A number of prior UDRP panels have found Complainants’ marks to be extremely well --known. See, for example, Facebook, Inc. v. Emma Bolton, 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 UK, LLC. 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>). 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 <facebooklibra.cash>, <facebooklibra.market>, <facebooklibra.trade> and <facebooklibra.win> be transferred to Complainant.
Date: January 29, 2020