WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Adam Smith
Case No. D2020-2234
1. The Parties
The Complainant is Facebook, Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Adam Smith, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <facebook-guard.com> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 26, 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 September 1, 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 September 8, 2020.
On September 1, 2020, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On September 1, 2020, the Center received the Complainant’s response in which it confirmed its request for English to be the language of the proceedings. The Respondent did not comment on the language of the proceeding.
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 in both Russian and English, and the proceedings commenced on September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2020.
The Center appointed Mariya Koval as the sole panelist in this matter on October 7, 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, founded in 2004, is the world’s leading provider of online social-networking services. Since its launch in 2004, the Complaint rapidly developed considerable renown and goodwill worldwide. Today the Complainant has approximately 2.7 billion monthly active users, 1.79 billion daily active users on average worldwide (as of July 30, 2020) and 13.5 million followers on Twitter. With approximately 85 percent of its daily active users outside the United States of America and Canada, the Complainant’s social-networking services are provided in more than 70 languages. In addition, the Complainant is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market. The Complainant’s Facebook trademark (the “FACEBOOK Trademark”) is currently one of the most famous online trademarks in the world. In 2019, the FACEBOOK Trademark ranked 14th in Interbrand’s Best Global Brands report.
The Complainant is the owner of numerous FACEBOOK Trademark registrations in many jurisdictions throughout the world, including but not limited to the following:
- United States Registration No. 3,122,052 in classes 35 and 38, registered on July 25, 2006;
- European Union Trademark Registration No. 009151192 in classes 9, 35, 36, 38, 41, 42 and 45, registered on December 17, 2010;
International Registration No. 1075094 in classes 9, 35, 36, 38, 41, 42 and 45, registered on July 16, 2010,
The Complainant has also made substantial investments to develop a strong presence online by being active on various social-media platforms. It operates a number of domain name registrations, which incorporate the FACEBOOK Trademark, among which are:
- <facebook.com> (registered on March 29, 1997)
- <facebook.biz> (registered on November 9, 2005)
- <facebook.us> (registered on May 5, 2004)
- <facebook.ca> (registered on January 26, 2005)
- <facebook.eu> (registered on April 26, 2006)
- <facebook.cn> (registered on April 3, 2005)
The Disputed Domain Name was registered on August 7, 2019. At the date of this Decision, the Disputed Domain Name does not resolve to any active website.
5. Parties’ Contentions
The Complainant contends that it has developed considerable reputation and goodwill worldwide in in connection with a wide variety of goods and services. Its main website “www.facebook.com” is currently ranked as the 4th most visited website in the world according to information company Alexa. The Complainant owns numerous registrations for FACEBOOK Trademark in many jurisdictions throughout the world.
The Complainant further contends that the Disputed Domain Name is confusingly similar to its FACEBOOK Trademark in view of the Disputed Domain Name incorporates the Complainant’s Trademark in its entirety as its leading element, together with the descriptive term “guard” separated from the Complainant’s Trademark by a hyphen. The Complainant notes that the combination of the Complainant’s FACEBOOK Trademark together with the term “guard” does not prevent a finding of confusing similarity between the Disputed Domain Name and the FACEBOOK Trademark, which remains clearly recognizable as the leading element of the Disputed Domain Name.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name grounding on the following:
- the Respondent is not a licensee of the Complainant;
- the Respondent is not affiliated with the Complainant in any way;
- the Complainant has not granted any authorization to the Respondent to use its FACEBOOK Trademark, in a domain name or otherwise;
- the Respondent is using the Disputed Domain Name in connection with the furtherance of a fraudulent scheme, whereby the Respondent is attempting to obtain copies of unsuspecting Facebook users’ personal identity documents, which may in turn be used for the purposes of identity theft, or as a means to gain unauthorized access to such users’ online accounts;
- the Respondent cannot legitimately claim to be commonly known by the Disputed Domain Name;
- the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant further alleges that the Respondent registered and is using the Disputed Domain Name in bad faith since the Respondent could not credibly argue that it did not have prior knowledge of the Complainant’s trade marks at the time it registered the Disputed Domain Name in August 2019, when the Complainant’s social network had already amassed well over 2 billion users.
The Complainant also submits that Respondent registered the Disputed Domain Name with the intent to use it in connection with a fraudulent email scheme targeting Facebook users, as evidenced by the Respondent’s subsequent use of the Disputed Domain Name, in bad faith.
The Complainant also notes that the Respondent has registered a number of other domain names that infringe third-party brands, such as <anz.su> (ANZ), <optus.pw> (OPTUS), <telstra.su> (TELSTRA), <westpaclogin.pw> and <westpaconline.pw> (WESTPAC), three of which are exact matches with the respective trademarks, that is indicative of a pattern of abusive domain name registrations, preventing the respective trademark owners from reflecting their trademarks in corresponding domain names, and serves as further evidence of the Respondent’s bad faith.
By registering the Disputed Domain Name, which differs from the Complainant’s Trademark only by the addition of the term “-guard”, and by using the Disputed Domain Name in connection with a fraudulent email scheme impersonating the Complainant, intended to mislead Facebook users into providing scanned copies of their sensitive personal identity documents to the Respondent, the Complainant submits that the Respondent is using the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
6.1. Preliminary Issue: Language of Proceedings
The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian.
The Complainant has filed the Complaint in English and requests that English be the language of this proceeding due to the following reasons:
- the Complainant is a United States corporation, whose main operating language is English; the Complainant’s representatives have no knowledge of Russian;
- the Disputed Domain Name does not resolve to an active website;
- the Disputed Domain Name has been used to create the email address, which has in turn been used in the furtherance of a fraudulent email scheme. The contents of emails sent from the abovementioned email address are entirely in English, which strongly supports an inference that the Respondent has sufficient knowledge of the English language;
- the Disputed Domain Name is in Latin script, rather than Russian Cyrillic, and includes the English-language term “guard”, which further supports an inference that the Respondent is capable of communicating in English.
In accordance with paragraph 11(a) of the Rules unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant is an American company and the Complainant’s representative is a French company. The Panel takes into account that neither the Complainant nor its representative are able to communicate in Russian and therefore forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding.
Moreover, according to the evidence presented by the Complainant (Annex 3 to the Complaint) the Respondent was involved in a fraudulent email scheme, where the contents of such emails were entirely in English. Thus, the Panel agrees with the Complainant that this supports an inference that the Respondent has sufficient knowledge of the English language.
Furthermore, having received the Center’s communication regarding the language of the proceeding, both in English and Russian, the Respondent did not comment on the language of the proceeding.
Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel considered all circumstances of this case, namely, the failure of the Respondent to object to English as the language of the proceedings; the Respondent’s decision not to respond to the Complaint, although being notified both in English and Russian; the Respondent’s fraudulent emails with English content; and, the Respondent’s choice of English words for the Disputed Domain Name. In light of the above, the Panel concludes in accordance with paragraph 11(a) of the Rules that English shall be the language of this proceeding. Translation of the Complaint and other materials would cause unnecessary delay of this proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has properly asserted its rights in the FACEBOOK Trademark due to the long use and number of registrations globally. The Panel notes that the registration of the Complainant’s Trademark predates the registration of the Disputed Domain Name. The Panel finds that the Complainant has established that FACEBOOK is well-recognized and world-famous Trademark.
The Disputed Domain Name reproduces the FACEBOOK Trademark in its entirety in combination with the hyphen, the dictionary term “guard” and the generic Top-Level Domain (“gTLD”) “.com”. According to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. The Panel finds that in view of the fact that in this case the Disputed Domain Name incorporates the entirety of the Complainant’s well-known FACEBOOK Trademark, the addition of the dictionary term “guard” does not in any case prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. It is also well established that the gTLD, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar.
Furthermore, pursuant to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
Also, the use of a hyphen in the Disputed Domain Name does not prevent a finding of confusing similarity, see e.g. Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”).
In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than twelve years after the FACEBOOK Trademark had been registered. The Complainant’s Trademark is well-known throughout the world.
The Complainant submits that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Namely, according to the evidence presented by the Complainant (Annex 3 to the Complaint) the Respondent was using the Disputed Domain Name to impersonate the Complainant in the furtherance of a fraudulent email scheme, whereby the Respondent is attempting to obtain copies of unsuspecting Facebook users’ personal identity documents, which may in turn be used for the purposes of identity theft, or as a means to gain unauthorized access to such users’ online accounts. Such use of the Disputed Domain Name cannot obviously be considered as bona fide offering of goods or services, or a legitimate noncommercial or fair use.
The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way; the Complainant has not granted any authorization for the Respondent to make use of its FACEBOOK Trademark, in any domain name or otherwise.
Moreover, the Panel finds that there is no evidence that the Respondent appears to own any FACEBOOK trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the global fame of the FACEBOOK Trademark it is highly unlikely that anybody, especially a natural person, could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.
Also, in accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Therefore, taking into consideration the reputation of the Complainant’s FACEBOOK Trademark, the addition of the dictionary term “guard” to the Complainant’s Trademark in the Disputed Domain Name also evidences that the Respondent was well aware of the FACEBOOK Trademark at the time of registration of the Disputed Domain Name and has done so for the only purpose to create an impression that the Disputed Domain Name is connected with the well-known Complainant’s Trademark.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel finds that the second element of the UDRP has been met by the Complainant.
C. Registered and Used in Bad Faith
Taking into consideration that the FACEBOOK Trademark has been in use more than 15 years and that the Complainant has spent huge amounts and efforts for promotion of its Trademark, which is undoubtedly globally known, the Panel considers it is clear that the Respondent was well aware of the Complainant and its Trademark at the time of registration of the Disputed Domain Name. Moreover, the Disputed Domain Name, incorporating the Complainant’s FACEBOOK Trademark in its entirety, is clearly deceptive for the Internet users with respect to the person rendering the services: entering the website under the Disputed Domain Name the Internet users will most likely believe that they are entering the website related to the Complainant’s business.
The Panel therefore finds that, taking into consideration that the Complainant’s well-known FACEBOOK Trademark is incorporated in the Disputed Domain Name in its entirety, the Respondent has obviously registered and has used the Disputed Domain Name for the only purpose of attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The website under the Disputed Domain Name is inactive on the date of filing the Complaint and on the date of this Decision, which also is a factor indicating bad faith. According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel also concludes that addition of the dictionary term “guard” to the FACEBOOK Trademark does not change an impression of strong association of the Disputed Domain Name with the Complainant’s Trademark. Previous UDRP panels have concluded that in appropriate circumstances, bad faith is established where the Complainant’s trademark has been well-known or in wide use at the time of registering a domain name, see, e.g., Chanel, Inc. v. EstcoEnterprises Ltd., Estco Technology Group, WIPO Case No. D2000-0413.
Also, in accordance with the WIPO Overview 3.0, section 3.4. UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers. Taking into account the Respondent’s use of the Disputed Domain Name for impersonating the Complainant in the furtherance of a fraudulent email scheme, such Respondent’s behavior cannot be in any way considered as good faith.
In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in 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 Disputed Domain Name <facebook-guard.com> be transferred to the Complainant.
Date: October 20, 2020