WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Perfect Privacy, LLC / Judy Walker
Case No. D2020-2630
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is Perfect Privacy, LLC / Judy Walker, United States.
2. The Domain Names and Registrar
The disputed domain names <business-facebook-covid19.com> and <facebook-marketplace-item2109526.com> are registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 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 October 14, 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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020.
The Center appointed Nels T. Lippert as the sole panelist in this matter on November 6, 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 operates the Facebook social networking website and mobile application with over one billion daily active accounts and over two billion monthly active users from all over the world. The Complainant has used the FACEBOOK trademarks and service marks since 2004.
The Complainant owns numerous registrations of the FACEBOOK mark in the United States and other countries including the following:
- United States Registration No. 3,122,052 issued on July 25, 2005;
- United States Registration No. 3,811,770 issued on November 23, 2010;
- European Union Registration No. 9,151,192 registered on December 17, 2010.
The Complainant’s main website is located at “www.facebook.com”.
The disputed domain names were each registered on March 13, 2020. As of the date of the Complaint, the disputed domain name <business-facebook-covid19.com> redirects to the disputed domain name <facebook-marketplace-item2109526.com>. Both disputed domain names, as of the date of the Complaint, are identified as deceptive sites.
5. Parties’ Contentions
The Complainant contends that the disputed domain names each are confusingly similar to the Complainant’s FACEBOOK trademark because each disputed domain name incorporates the FACEBOOK mark in its entirety and merely adds descriptive terms such as “business”, “covid19”, “marketplace” and “item2109526”. The Complainant further argues that the addition of hyphens and a generic Top-Level Domain (“gTLD”) are not distinguishing features.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain names because the Complainant has not licensed or authorized the Respondent to use the FACEBOOK trademark, nor does the Respondent have any legal relationship with the Complainant that would entitle it to use the FACEBOOK trademark. The Complainant also notes that neither the WhoIs data for the disputed domain names nor websites to which the disputed domain names resolve support that the Respondent is known by either disputed domain name.
The Complainant further contends that the Respondent is not making a bona fide offering of goods or services through the disputed domain names, but rather uses the disputed domain names for the illegal activity of phishing. The Complainant notes that both disputed domain names resolve to sites which were determined to be phishing sites and the website hosting company has subsequently removed all content previously hosted on the websites.
Finally, the Complainant contends that the disputed domain names were registered and used in bad faith because they are confusingly similar to the Complainant’s FACEBOOK trademark and were used in connection with a phishing scheme. Further evidence that the disputed domain names were registered in bad faith is the fact that both disputed domain names were registered only two days after the Complainant launched its Business Resource Hub for businesses impacted by the COVID virus, thus indicating a bad faith attempt to capitalize on the Complainant’s announcement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
In this case the disputed domain names incorporate the Complainant’s FACEBOOK trademark in its entirety plus the descriptive terms “business”, “covid19”, “marketplace” and “item2109526” separated by hyphens. As noted in 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 descriptive terms would not prevent a finding of a confusing similarity under the first element. Furthermore, the addition of the applicable Top-Level Domain is viewed as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Here, the addition of the descriptive terms separated by hyphens do not operate to prevent a finding of confusing similarity as the key element, FACEBOOK, is reproduced in the disputed domain names.
The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the disputed domain names. The Complainant contends that none of the circumstances under paragraph 4(c) of the Policy would apply in this case. The Respondent has not advanced rights or legitimate interests to rebut the Complainant’s prima facie case, and none are evident from the record or the use of the disputed domain names.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In this case the Complainant has submitted compelling evidence that the disputed domain names were registered and used in bad faith. Specifically, the Complainant has established that the Respondent registered and was using, at the time of the Complaint, the disputed domain names to engage in an illegal phishing scheme to attract and defraud unsuspecting individuals. The disputed domain names were registered by the Respondent many years after the Complainant’s FACEBOOK mark was registered in the United States. Furthermore, as noted by the Complainant, the disputed domain names were registered two days after the Complainant launched its Business Resource Hub for businesses impacted by COVID which additionally evidences knowledge and bad faith. Because the Respondent’s use of the disputed domain names was in furtherance of an illegal scheme it illustrates that the Respondent knew of Complainant at the time of registration and had a bad faith intent to use the disputed domain names for purposes of deceiving Internet users into divulging private information. Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-0879.
As noted in WIPO Overview 3.0, section 3.1.4, because use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.
Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith and the Complainant has satisfied the requirements 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 names, <business-facebook-covid19.com> and <facebook-marketplace-item2109526.com>, be transferred to the Complainant.
Nels T. Lippert
Date: November 17, 2020