WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Batyi Bela, Whois privacy services, provided by DomainProtect

Case No. D2020-2683

1. The Parties

The Complainant is Facebook, Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Batyi Bela, Whois privacy services, provided by DomainProtect, Hungary.

2. The Domain Name and Registrar

The disputed domain name <fbvideo.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 October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 21, 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 worldwide provider of online social networking services founded in 2004. It allows Internet users to connect with friends, family, colleagues, and others, and to share information, images and videos mainly via its website available at “www.facebook.com” in 100 languages, which is ranked as the sixth most visited website in the world by Alexa. The Complainant uses the name and trademark FB (the “FB mark”) and is widely known under this designation (as well as the “FACEBOOK mark”), and owns a number of registrations for FB and FACEBOOK marks and domain names around the world including the following:

- European Union Trade Mark No. 008981383 FB, registered on August 23, 2011, in class 45;
- European Union Trade Mark No. 004535381 FACEBOOK, registered on June 22, 2011, in classes 35 and 38;
- European Union Trade Mark No. 009724774 F, registered on February 11, 2011, in classes 9, 36, 38, 41, 42, 45; and
- European Union Trade Mark No. 010517704 LIKE, registered on May 19, 2012, in classes 9, 41, 42, 45.
- Domain names including <facebook.com> (registered on March 29, 1997), <fb.com> (registered on May 21, 1990), <fb.asia> (registered on November 21, 2013), and <fb.co> (registered on April 26, 2010).

The well-known character of the Complainant’s trademarks have been recognized by prior decisions under the Policy¹ .

The disputed domain name was registered on October 20, 2008 and it resolves to a website, in English language, allowing Internet users to download videos from the Complainant’s website (“www.facebook.com”) and follow a tutorial on how to download such videos, including sections for the top liked videos, the top shared videos, top funny videos, top sad videos, etc. This website reproduces the Complainant’s FACEBOOK, FB and LIKE marks, as well as the Complainant’s website “look and feel” (with similar color schemes). This website contains a disclaimer placed in the middle of its heading and at the bottom of its vertical right side menu stating as follows: “Important: This website does NOT have anything to do with Facebook Inc, all videos, images are hosted on facebook servers, we use Facebook Graph API to display all data.” Its heading’s disclaimer further explains the downloading services provided. This website does not contain any reference to the owner of the site or of the disputed domain name, any fiscal information and contact details.

The disputed domain name is listed for sale on Sedo platform (at “www.sedo.com”) for a minimum of EUR 800 or USD 800.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

According to historic screen captures available at the Internet Archive WayBack Machine, the disputed domain name was pointing to a parking page offering it for sale and started to point to a website similar to the Respondent’s website around February 2017. The privacy provider changed between June and October 2016 when the WhoIs briefly showed the underlying details of the Respondent. The disputed domain name was originally registered with the registrar Misternic LLC until at least October 19, 2016, and in a WhoIs dated October 18, 2016 (one day before the disputed domain name changed registrar to GoDaddy.com), the Respondent was listed as the registrant, which suggests that the Respondent acquired the disputed domain name at that time.

The Complainant sent various communications and a cease and desist letter to the Respondent (the first on January 3, 2018), requesting the website be taken down. No response was received but the Respondent’s website was updated short after the first communication to add the abovementioned disclaimer.

The disputed domain name incorporates the Complainant’s FB mark in its entirety with the addition of the descriptive term “video”. The Complainant’s trademark is clearly recognizable as the leading element of the disputed domain name, and the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration.

The Respondent has no rights or legitimate interests in the disputed domain name, being unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent is not a licensee of the Complainant, nor has it been otherwise authorized to make any use of the FB mark, and is not commonly known by the terms “fb” or “fb video”. The disputed domain name is not used in connection with a bona fide offering of goods or services, as downloading videos are not permitted by Facebook’s Developer Policies. Further, the Respondent is targeting the Complainant, displaying logos similar to its trademarks and using the same “look and feel” as the Complainant’s website, creating confusion as to the entity providing the downloading services on offer, seeking to benefit from the Complainant’s reputation.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks are well known throughout the world, being the Complainant commonly known by the abbreviation “fb”, and were already known in 2008, having around 145 million monthly users in August 2008. It is inconceivable that the Respondent did not have knowledge of the Complainant’s FB mark when it acquired the disputed domain name in 2016, as there were already 1.86 billion monthly users at that time. It is clear from the content of the Respondent’s website that it had the Complainant in mind when acquiring the disputed domain name. The Respondent has engaged in a bad faith pattern of abusive domain name registration, having registered at least 5 domain names comprising third-party trademarks and having been involved in previous UDRP proceedings (at least in Mattel, Inc. v. Batyi Bela, WIPO Case No. D2011-1598). The disputed domain name is used to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website. The disclaimer contained at the Respondent’s website does not serve to render the Respondent’s activities bona fide, as the Respondent’s website is clearly creating a misleading impression of endorsement by the Complainant. Further evidences of bad faith are the fact that the disputed domain name is listed for sale on the Sedo platform for a minimum of USD 800, and the Respondent used a privacy service to conceal its identity.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant indisputably has rights in the registered trademarks FACEBOOK and FB, both by virtue of its numerous trademark registrations and as a result of its global goodwill and reputation. The disputed domain name incorporates the FB mark in its entirety followed by the term “video”, which does not prevent a finding of confusing similarity. The Complainant’s trademark FB is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.

Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.

The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.

The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.

The evidence provided by the Complainant shows the disputed domain name was temporally linked to a parking page offering it for sale, and, since around February 2017, it points to websites as the one currently linked to the disputed domain name, offering services related to downloading videos from the Complainant’s social media platform. The Respondent’s website includes in its content various references to the Complainant’s trademarks, using a combination of colors and various graphical elements that clearly reproduce the FACEBOOK platform’s “look and feel”. Therefore, while the Respondent’s website contains a disclaimer, the Panel considers that such disclaimer is not sufficient to avoid the risk of affiliation of the disputed domain name and the Respondent’s website with the Complainant and its FB trademark.

A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s FB trademark in its entirety adding the term “video” that refers to the Complainant’s activity and one of the content of its social media-networking platform. Therefore, the Panel considers that there is a risk of implied affiliation. See section 2.5, WIPO Overview 3.0.

The Panel further notes the extensive presence of the trademarks FB and FACEBOOK over the Internet, as well as the extensive use of these marks worldwide, which makes it difficult to think of any rights or legitimate interests in a domain name comprising any of these trademarks, unless authorized by the Complainant.

Furthermore, the services allegedly provided in the Respondent’s website (downloading videos from the FACEBOOK platform) contravene the Complainant’s use regulations for its social media platform, being of doubtful legality, and, in any case, this use does not confer rights or legitimate interests on the Respondent under the Policy.

The Panel further considers remarkably the Respondent’s attitude of deliberately choosing not to reply to the Complaint, the various communications and the cease and desist letter sent by the Complainant, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interest in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Complainant has established a prima facie case, and the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name.

Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The evidence provided by the Complainant shows the disputed domain name was temporally linked to a parking page offering it for sale, then it started to point to a website similar to the Respondent’s website around February 2017, and the privacy provider changed between June and October 2016, when the WhoIs briefly showed the underlying details of the Respondent. The disputed domain name was originally registered with a different registrar (until at least October 19, 2016 when it changed to GoDaddy.com). These circumstances suggest a change in the ownership of the disputed domain name, pointing to consider that it was acquired by the Respondent around June-October 2016.

The Panel notes that in 2016 the Complainant’s trademarks had extensive presence over the Internet and were worldwide well-known, being inconceivable that the Respondent did not have knowledge of the FB mark at that time. Furthermore, all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name incorporate the Complainant’s trademark FB in its entirety, followed by a term (“video”) that may refer to the Complainant’s platform content, its social media networking services, which enhances the intrinsic likelihood of confusion and affiliation;
(ii) the Complainant’s trademark is well-known worldwide and the Complainant operates globally through the Internet;
(iii) the Respondent used a privacy registration service, and, according to the evidence provided by the Complainant, has engaged in a bad faith pattern of abusive domain name registration, having registered at least 5 domain names comprising third-party trademarks and having been involved in previous UDRP proceedings (at least in WIPO Case No. D2011-1598, supra).
(iv) the Respondent’s website includes various references to the Complainant’s trademarks, uses a combination of colors and various graphical elements that clearly reproduce the FACEBOOK platform’s “look and feel”;
(v) the disputed domain name is currently listed for sale on the Sedo platform for a minimum of USD 800 or EUR 800;
(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint, or to any of the communications sent by the Complainant; and
(vii) according to the evidence provided by the Complainant, the sole reaction by the Respondent to its first communication, was to include a disclaimer in the website linked to the disputed domain name.

The Panel considers that, in cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. However, when the overall circumstances of a case point to the respondent’s bad faith, as in this proceeding, the mere existence of a disclaimer cannot cure such bad faith, being a further evidence of bad faith as an admission by the Respondent that users may be confused. See section 3.7, WIPO Overview 3.0.

In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used targeting the FB mark in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users to the Respondent’s site, or by trying to transfer the disputed domain name for valuable consideration in excess of its documented registration costs.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <fbvideo.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: December 30, 2020

¹ See, among others, Facebook Inc. v. Mats Oscarsson, WIPO Case No. DEC2015-0001; Facebook, Inc. v. Toriqul Islam / Bright IT, Toriqul Islam (the “First Respondent”), Foyes Babu (the “Second Respondent”), Shafiqul Islam / Stream365, Shafiqul Islam (the “Third Respondent”), Feroj Ahammed, It House (the “Fourth Respondent”), WIPO Case No. D2019-0082; and Facebook Inc. v. Peter Kuku, WIPO Case No. D2020-0517.