WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Joseph Spitaleri
Case No. D2020-2277
1. The Parties
Complainant is Facebook, Inc., United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Joseph Spitaleri, United States.
2. The Domain Name and Registrar
The disputed domain name <facebooktravel.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 August 31, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 Complainant on September 2, 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 September 4, 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 September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Center received informal email communications from Respondent on September 16 and 17, 2020. Respondent did not submit any formal response. The Center notified the Parties on October 7, 2020, that it would proceed to panel appointment. The Center received further informal email communications from Respondent on October 7 and 15, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 15, 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 the world’s leading provider of online social networking services. Launched in 2004, Facebook now has over 2 billion monthly active users. Its main website is “www.facebook.com”, currently ranked one of the top ten most visited websites in the world, and in the United States, where Respondent lists his address of record.
Complainant owns several registrations for the FACEBOOK mark, including in the United States where Respondent lists his address of record. These include U.S. Registration No. 3041791 (registered January 10, 2006); European Union Registration No. 004535381 (registered June 22, 2011), and International Registration No. 1075807 (registered July 16, 2010).
The disputed domain name <facebooktravel.com> was registered on October 27, 2018. The disputed domain name is not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name <facebooktravel.com>, is identical or confusingly similar to Complainants’ trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the FACEBOOK mark, which is “highly distinctive” and “well-known” globally. Complainant contends that Respondent has incorporated Complainant’s well-known FACEBOOK mark into the disputed domain name, and merely added the descriptive term, “travel.” Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
Respondent submitted several informal responses to Complainant’s contentions, stating that Respondent was “not keeping” the disputed domain name as well as that the disputed domain name “has been deleted.” Respondent did not submit a formal reply to Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Statement
The Panel notes that Respondent appears to have informally expressed a desire to settle this proceeding. Complainant has indicated, however, that it wishes to obtain a decision from the Panel. Under these circumstances, the Panel finds it appropriate to discuss and render a full decision. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.13.
B. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name <facebooktravel.com> is identical or confusingly similar to a trademark or service mark in which Complainants has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates Complainant’s FACEBOOK mark and merely added the descriptive term, “travel,” which users may identify as an auxiliary service to Complainant’s well-known social networking services.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (<microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (<walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (<ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainants have rights in accordance with paragraph (4)(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
D. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. SeeWIPO Overview 3.0, Section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, nor to prior correspondence from Complainant. Furthermore, Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world. A number of prior UDRP panels have found Complainant’s FACEBOOK mark to be extremely well known. See, for example, Facebook Inc. v. Bolton, WIPO Case No. D2016-0623 (finding FACEBOOK to be “one of the most famous online trademarks in the world”); and Facebook Inc., et. al. v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150 (transferring, inter alia, <facebgok.com>, <facebks.com>, <facebokep.com>, <faceboki.com>, <facebuki.com>, <facetagram.com>, <fbooklogin.com>, and <thefacebok.com>). Given the level of exposure of Complainant’s marks and of its social networking services, the Panel would be hard pressed to find that Respondent was not aware of them at the time he registered the disputed domain name.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of 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 <facebooktravel.com> be transferred to Complainant.
Date: October 24, 2020