WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Eric Katsov, Stockring, Inc.
Case No. D2020-1041
1. The Parties
The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Eric Katsov, Stockring, Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <facebook3.com> (the “Domain Name”) 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 April 28, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2020, 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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent submitted the response on May 22, 2020.1 Accordingly, the Center notified the Party that it will proceed to appoint Panel on May 22, 2020.
The Center appointed Michelle Brownlee as the sole panelist in this matter on June 3, 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 owns the following trademark registrations:
- United States Registration Number 3041791 for the mark FACEBOOK in connection with “providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking” in International Class 38;
- European Union Trademark Registration Number 4535381 for the mark FACEBOOK in connection with “Providing an online directory information service featuring information regarding, and in the nature of, collegiate life, classifieds, virtual community and social networking” in International Class 35 and “Telecommunications; providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking.” in International Class 38.
The Domain Name was registered on December 29, 2019.
5. Parties’ Contentions
The Complainant states that it is the world’s leading provider of online social networking services, and since it was founded in 2004, it has allowed Internet users to stay connected with friends and family via its website available at “www.facebook.com”. The Complainant contends that its Facebook website has developed considerable renown and goodwill and currently has more than 2.5 billion monthly active users and 1.66 billion daily active users on average worldwide. The Complainant also states that its main website “www.facebook.com” is currently ranked as the fourth most visited website both in the world and in the United States, according to the information company Alexa. The Complainant adds that its Facebook services are also available for mobile devices and the Facebook mobile application software is ranked as the third most downloaded application in the world and the ninth in the United States according to App Annie’s Top Apps Ranking in 2020.
The Complainant states that it owns numerous domain names consisting of its FACEBOOK trademark paired with generic and country code Top-Level Domains, including <facebook.com>, <facebook.org>, <facebook.net>, <facebook.us>, <facebook.ca>, <facebook.in> and <facebook.cn>. The Complainant submits a printout of a search in the Google search engine in support of the proposition that it is the exclusive user of the term, since all the references on the first page of the search results refer to the Complainant or its services.
The Complainant states that the Domain Name is currently associated with a web site that is offering the Domain Name for sale. The Complainant submits evidence that shows that the Domain Name previously directed Internet users to a page on the “www.facebook.com” web site for a user called “Stock Market Monitor.” This page was used to promote the sale of mobile application software that claimed to help users make stock investment decisions. The Complainant also submits evidence that the Respondent has registered other domain names that incorporate other well-known trademarks, such as <walmart3.com>, <gotyoutube.com>, <microsoft-stock.info> and <disney-stock.info>.
On March 2, 2020, the Complainant sent a cease and desist letter to the Respondent requesting transfer of the Domain Name. The Respondent responded the same day and offered to sell the Domain Name for USD 1,000.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.
The Respondent argues that he is the legitimate owner of the “www.facebook3.com” website, which is used to market and sell books about Facebook that are available for purchase on the “www.amazon.com” website. The Respondent disagrees that his website infringes any of the Complainant’s intellectual property rights. The Respondent states that the Domain Name is his legitimate property and is protected by American private property laws. The Respondent argues that the Complainant’s request for transfer of the Domain Name should be denied.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the FACEBOOK trademark. The addition of the number “3” in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s trademark. Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s FACEBOOK trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not offered any evidence that he has been commonly known by the Domain Name, or that he is making a noncommercial or fair use of the Domain Name. The only argument the Respondent makes is regarding use of the Domain Name in connection with an offering of goods, as he stated that he was using the Domain Name in connection with a website offering books about the Complainant for sale. The Panel finds that the Respondent’s claim that he was using the Domain Name to sell books about the Complainant is not credible. He submitted no evidence in support of this claim, which contradicts the credible evidence that the Complainant presented that showed that the Domain Name was used first to direct Internet users to a page on the “www.facebook.com” website dedicated to the promotion of mobile application software to aid investment decisions, and then to a website that offered the Domain Name for sale. In the Panel’s view, neither of these uses can be considered a bona fide offering of goods or services.
Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(i) and 4(b)(iv) of the Policy. The Complainant presented evidence that the Respondent was using the Domain Name to direct users to a page on the Complainant’s site that promoted mobile application software. Using the Domain Name to direct Internet users to this page demonstrates an intent by the Respondent to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s FACEBOOK trademark, which presumably results in commercial gain to the Respondent. The Complainant also presented evidence that the Respondent used the Domain Name to direct users to a page offering the Domain Name for sale, and responded to the Complainant’s cease and desist letter by offering to sell the Domain Name for USD 1,000. The evidence presented by the Complainant demonstrates that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant. The Complainant presented registration records of four domain names registered by the Respondent that incorporated other famous trademarks as further evidence of the Respondent’s bad faith.
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, <facebook3.com>, be transferred to the Complainant.
Date: June 17, 2020
1 The Center received the response at 8:03 am Geneva time on May 22, 2020, which would be 11:03 pm on May 21, 2020 in California where the Respondent is located. Since the time zone is not specified in the letter setting the deadline, the Respondent’s response should be considered timely.