WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Domain Administrator, DomainMarket.com
Case No. D2020-1199
1. The Parties
Complainant is Facebook Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domain Administrator, DomainMarket.com, United States of America.
2. The Domain Names and Registrar
The disputed domain names <facebookanalysis.com>, <facebookcommerce.com>, <facebookfan.com>, <facebookforever.com>, <facebookguy.com>, <facebookservices.com>, <facebookstrategy.com> (the “Domain Names”) are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 15, 2020 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 May 15, 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 Respondent of the Complaint, and the proceedings commenced on May 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. On June 3, 2020, Respondent requested to extend the Response due to June 18, 2020. Respondent submitted the Response on June 18, 2020. On June 19, 2020, Complainant sent an email to the Center. On the same day, Respondent replied Complainant by sending an email.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 1, 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 an online social media service provider. Complainant has provided social networking services under the FACEBOOK trademark since 2004, and today is the world’s largest social media firm. Complainant has more than 2.3 billion active monthly users and more than 1.4 billion active daily users around the world. Complainant’s website, located at “www.facebook.com”, is one of the most visited sites in the world.
The trademark FACEBOOK is registered in numerous jurisdictions, including United States Patent and Trademark Office Registration No. 3,041,791, registered on January 10, 2006.
There is little doubt that FACEBOOK is a famous trademark.
The Domain Names were registered at various points between May 4, 2016 to May 10, 2017. Four of the Domain Names are redirected to websites inviting users to purchase them. Three resolve to inactive websites. All seven Domain Names are on sale at the website “www.domainmarket.com” for prices ranging from USD 2,888 to USD 39,888.
Complainant asserted that all seven Domain Names are owned by the same person or entity, the Respondent in this proceeding. Respondent has not denied that assertion.
According to Complainant, Respondent is a speculator in domain names, and Respondent has been held in bad faith in three previous decisions under the UDRP. Respondent states that it is in the business of acquiring domain names for resale, which is a legitimate business.
After this proceeding was initiated, Respondent offered to transfer the seven Domain Names to Complainant for a “small administrative fee” of USD 2,500 apiece. Complainant responded that it preferred to have a decision on the merits. Respondent then responded that it would be willing to surrender the Domain Names for no money (i.e., that it would “waive the admin fee”), as long as it obtained “a release of claims relating to these domains and dismissal of the UDRP [proceeding].” Complainant reiterated that it preferred to wait for a decision by the Panel in this proceeding.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent has not addressed the substantive points raised by Complainant, other than to deny that it is engaged in an illegitimate business. Respondent has also consented to the transfer of the Domain Names, asserting that a decision by the Panel is therefore unnecessary.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the famous trademark FACEBOOK through widespread registration and use demonstrated in the record. The Panel also finds that the Domain Names are confusingly similar to the mark. Each of the Domain Names fully incorporates the FACEBOOK mark, and adds a dictionary term. The mark is clearly recognizable within the Domain Names, and is clearly the dominant element of each of the Domain Names.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. FACEBOOK is a famous trademark, which is not disputed by Respondent. There is no showing by Respondent of any motive, much less any legitimate motive, for registering these Domain Names. Each of the Domain Names is for sale, at prices well in excess of any alleged or reasonable out-of-pocket costs. It appears clear from the record that Respondent, who is in the business of acquiring domain names and selling at least some of them, registered these Domain Names, which incorporate a famous trademark, with the goal of making a profit from them in one manner or another because of the fame of Complainant’s mark.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Names in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(i). There is no denial by Respondent that it was aware of the famous FACEBOOK mark at the time these Domain Names were registered. The asking price for each Domain Name (USD 2,888 to USD 39,888) indicates that Respondent was seeking to profit from the fame of the FACEBOOK mark by reselling the Domain Names.
The Panel need not make a finding that Respondent has engaged in a pattern of preclusive registrations under Policy paragraph 4(b)(ii). Nor does the Panel need to comment extensively on Respondent’s argument that acquiring and reselling domain names can be a legitimate enterprise. The short answer is that it can be legitimate as a general proposition, but when the targeting of another’s trademark is involved, the answer can be very different.
The Panel notes that Respondent ultimately consented to the remedy sought by Complainant in this proceeding, viz., a transfer of each Domain Name to Complainant. The Panel here would have been inclined to transfer the seven Domain Names to Complainant with no further ado, but Respondent’s request for a USD 250 “small administrative fee” per Domain Name (for a total of USD 1,750) was a final improper grasp at undue profit that tipped the balance in favor of deciding this case on the merits.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <facebookanalysis.com>, <facebookcommerce.com>, <facebookfan.com>, <facebookforever.com>, <facebookguy.com>, <facebookservices.com>, and <facebookstrategy.com> be transferred to Complainant.
Robert A. Badgley
Date: July 6, 2020