WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Serhii Pronin
Case No. D2020-0172
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Serhii Pronin, Poland.
2. The Domain Name and Registrar
The disputed domain name <facębook.com> [xn--facbook-c9a.com] is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2020, 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 January 29, 2020, 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 January 30, 2020.
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 January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2020.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 25, 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
The Complainant, Facebook, Inc., is a leading provider of online social networking services. Founded in 2004, Facebook allows Internet users to stay connected with friends and family, and to share information mainly via its website at “www.facebook.com”. After its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide. Today, Facebook has approximately 2.45 billion monthly active users and 1.62 billion daily active users on average worldwide (as of November 2019). The Complainant’s FACEBOOK trademark is currently one of the most famous online trademarks in the world. In September 2019, the FACEBOOK brand ranked 14 in Interbrand’s Best Global Brands report.
Given the exclusively online nature of the Complainant's social networking business, and reflecting its global reach, Facebook is the owner of numerous domain names consisting of or including the FACEBOOK trademark under various generic Top-Level Domains (“gTLDs”) as well as under various country code Top-Level Domains (“ccTLDs”).
The Complainant has shown that it has developed a strong presence online by being active on various social media forums. For instance, Facebook’s official page on Facebook has over 213 million “likes”. In addition, Facebook has 13.5 million followers on Twitter.
In addition to its strong presence online, the Complainant has proven to be the owner of the FACEBOOK trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
United States trademark FACEBOOK, registration number 3122052, registered on July 25, 2006;
European Union trademark FACEBOOK, registration number 005722392, registered on April 29, 2008; and,
International trademark FACEBOOK, registration number 1232015, registered on December 15, 2014.
The disputed domain name was registered on July 13, 2018, by the Respondent, and at the time of the filing of the Complaint, it was configured to redirect to Facebook’s dedicated security vulnerability webpage available at “https://www.facebook.com/whitehat/”.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s registered trademark. In this regard, the Complainant submits that the disputed domain name has been registered using Punycode and can therefore be displayed with non-ASCII characters. Consequently, the disputed domain name
(<xn--facbook-c9a.com>) can be displayed as <facębook.com>. Thus, the disputed domain name <facębook.com> is virtually indistinguishable from the Complainant’s FACEBOOK trademark.
The Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the FACEBOOK trademark.
The disputed domain name has been registered using Punycode and can therefore be displayed as <facębook.com>.
This Panel agrees with the Complainant’s assertion that this use of Punycode to create the disputed domain name is irrelevant in countering the confusing similarity between the Complainant’s renowned FACEBOOK trademark and the disputed domain name.
In fact, it has already been held by previous UDRP panels that “the use of Punycode to create a domain name indistinguishable from a well-known trademark manifestly does not prevent a finding of identity or confusing similarity between the two”. See Inter Ikea Systems B.V. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-2211 (<ıĸea.com>).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the FACEBOOK trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “facebook” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
The FACEBOOK trademark has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown and thus the FACEBOOK mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant.
Consequently, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
The Panel also agrees with the Complainant’s assertions that the Respondent’s intent to target the Complainant can be readily inferred from the redirection of the disputed domain name to the Complainant’s own website, and that, given the above, 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 the registration of the disputed domain name.
The Panel further notes that given the Complainant’s renown worldwide and notably the Respondent’s use of Punycode to make the disputed domain name look highly similar to the Complainant’s trademark, it would also be inconceivable for the Respondent to argue that it registered the disputed domain name for any legitimate purpose other than to target the Complainant’s marks in an attempt either to trade upon the Complainant’s reputation and goodwill or to conduct fraudulent activities.
Furthermore, the Respondent’s use of the disputed domain name to redirect to the Complainant’s website without the Complainant’s authorization affirms the Respondent’s bad faith intent to trade upon the Complainant’s reputation and goodwill or to conduct fraudulent activity.
Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service.
Finally, the Respondent did not reply to the Complainant’s cease and desist letter.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 name <facębook.com> be transferred to the Complainant.
Date: March 6, 2020