WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Legjendari Kosovar
Case No. D2020-1348
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Legjendari Kosovar, Albania.
2. The Domain Name and Registrar
The disputed domain names <copyright-fb.com> and <copyrights-fb.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020 concerning the Domain Name <copyrights-fb.com>. On May 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name <copyrights-fb.com>. On May 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <copyrights-fb.com>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 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 June 11, 2020, also adding the Domain Name <copyright-fb.com> to the Complaint, which the Center subsequently verified with the Registrar on the same day.
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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 11, 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 is a leading global provider of social media and social networking services, delivered most commonly through its website at “www.facebook.com”. The Complainant’s Facebook service has 2.45 billion monthly active users and is the 4th most visited website in the world.
The Complainant is the owner of multiple trade mark registrations for the letters FB (the “FB Mark”), including a United States trade mark registered on December 23, 2014 (registration number 4,659,777) for “promoting the goods and services of others over the Internet” in class 35.
The Domain Name <copyrights-fb.com> was registered on May 3, 2020. The Domain Name <copyright-fb.com> was registered on June 1, 2020. While each of the Domain Names presently have their account suspended, prior to the commencement of the proceedings each of the Domain Names resolved to a website (“the Respondent’s Websites”) that was a non-functional “Index of/” page. The Domain Name <copyrights-fb.com> has been used to send emails purporting to be from the Complainant, reproducing the Complainant’s blue “F” logo, asserting that the recipient had breached “Facebook Pages Terms” and directing them to a website that mimicked the Complainant’s Facebook website, which invited the visitor to provide their personal information including name, date of birth, and Facebook log-in email address or phone number.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s FB Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the FB Mark, having registered the FB Mark in the United States and European Union. The Domain Names each reproduce the FB Mark along with additional words “copyright-” or “copyrights-”) which do not distinguish the Domain Names from the FB Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names nor does the Respondent have any authorization from the Complainant to register the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondent is passively holding one Domain Name, and using the other Domain Name to operate a fraudulent phishing scheme to impersonate the Complainant, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. One Domain Name is being used to create emails to impersonate the Complainant for the purpose of a phishing scheme. This amounts to an attempt to perpetuate fraud. The fact that the other Domain Name has not been actively used does not prevent a finding of bad faith, given the surrounding circumstances. Accordingly, uch conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the FB Mark, having registrations for the FB Mark as a trade mark in the United States as well as in the European Union.
Each of the Domain Names incorporates the FB Mark with the addition the descriptive terms “copyright-” and “copyrights-“ (and the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any domain name). Other UDRP panels have repeatedly held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884; and, Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s FB Mark.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the FB Mark or a mark similar to the FB Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use. Indeed there is no evidence of any use of the Domain Name <copyright-fb.com> at all.
The Respondent has used the Domain Name <copyrights-fb.com> to send emails to third parties that impersonate the Complainant and direct that the recipient provide personal details to the Respondent (at a website that also impersonates the Complainant’s website). Such conduct is phishing, a type of fraud conducted over the Internet. As stated in section 2.3.1 of the WIPO Overview 3.0 “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 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 the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the FB Mark at the time the Domain Names were registered. The Domain Name <copyrights-fb.com> has been used to create an email account from which the Respondent sends emails purporting to be from the Complainant, directing visitors to a website that also impersonates the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Names were registered other than by reference to the Complainant. The registration of the Domain Names in awareness of the Complainant and its rights in the FB Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name <copyrights-fb.com> to send spoof emails seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith; see The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804.
Notwithstanding the lack of active use of the <copyright-fb.com> Domain Name, the Panel finds on the balance of probabilities that the Domain Name <copyright-fb.com> was used, or held pending use, in a similar manner as the <copyrights-fb.com> Domain Name.
In view of the above, the Panel finds that the Respondent is using the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under 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 Domain Names <copyright-fb.com> and <copyrights-fb.com> be transferred to the Complainant.
Date: August 13, 2020