WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Perfect Privacy, LLC / Kypros Kesidis

Case No. D2021-0355

1. The Parties

The Complainant is Facebook, Inc., United States of America (“United States”), represented by Tucker Ellis LLP, United States of America.

The Respondent is Perfect Privacy, LLC / Kypros Kesidis, Cyprus.

2. The Domain Name and Registrar

The disputed domain name <facebookpayments.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 February 5, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2021, 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 February 9, 2021 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 February 13, 2021.

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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on April 15, 2021. 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 very well-known Facebook social networking website and mobile application. It has more than one billion daily active accounts and over two billion monthly active users from all over the world. Approximately 85 percent of the daily active Facebook users are outside the United States and Canada and its social networking services are provided in more than 70 languages.

The Complainant owns various trade mark registrations throughout the world for its FACEBOOK trade mark including United States trade mark registration 3122052 registered on July 25, 2006 and European Union trade mark registration 009151192 registered on December 17, 2010. It owns numerous domain names incorporating the FACEBOOK mark including <facebook.com> which resolves to its main website that is currently ranked as the sixth most visited website in the world according to information company, Alexa. In addition, it has offered payment services since 2007 and in 2019 launched its “Facebook Pay” business for which it owns the domain name <facebookpay.com> that redirects to the Complainant’s webpage for this service at <pay.facebook.com>. It also owns a pending United States trade mark application for its FACEBOOK PAY mark.

The disputed domain name was registered on August 13, 2020 and resolves to a blank website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights as set out above for its FACEBOOK trade mark and unregistered rights in the FACEBOOK PAY mark. Essentially, it says that the disputed domain name incorporates its FACEBOOK mark and replaces the element “pay” in its FACEBOOK PAY mark with the word “payments” and is as a result confusingly similar to its trade mark rights for the purposes of the first element of the Policy.

The Complainant submits that it has not licensed or authorised the Respondent to use the Complainant’s well known FACEBOOK mark or its FACEBOOK PAY mark and does not have any legal relationship with the Complainant that would entitle the Respondent to use either mark. Further, it says that neither the WhoIs data for the disputed domain name, nor the corresponding website available at the disputed domain name supports a conclusion that the Respondent is known by the disputed domain name and it is not aware and there is no supporting evidence that the Respondent is known by the disputed domain name.

Neither says the Complainant is there any evidence that the Respondent uses or is preparing to use the disputed domain name in connection with a bona fide offering of goods or services. It submits rather that the Respondent has no legitimate reason for using the FACEBOOK mark or the FACEBOOK PAY mark within the disputed domain name and that the Respondent is using the disputed domain name passively in an inactive state which is also not consistent with legitimate noncommercial or fair use. Finally, it submits that considering the degree of renown attaching to both the Complainant’s marks and the Respondent’s unauthorized incorporation of them into the disputed domain name, there are no circumstances under which the Respondent’s use of the disputed domain could plausibly be bona fide or legitimate under the Policy.

As far as bad faith is concerned, the Complainant submits that the passive holding of the disputed domain name amounts to use in bad faith. Secondly, it says that the registration of a confusingly similar domain name such as the disputed domain name, that is obviously connected with a particular trade mark owner, by someone with no connection with the trade mark owner, is indicative of bad faith.

In this case, the Complainant says that the Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s well-known FACEBOOK and FACEBOOK PAY marks. It says that because these marks are so obviously connected with the Complainant and the disputed domain name clearly references these marks, that the registration and passive holding of the disputed domain name by the Respondent, who has no connection with the Complainant, supports a finding of bad faith under the Policy. Additionally, says the Complainant, the fact that the Respondent has used a privacy service, presumably to avoid being notified of a UDRP proceeding supports an inference of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its FACEBOOK trade mark under United States trade mark registration 3122052 registered on July 25, 2006 and European Union trade mark registration 009151192 registered on December 17, 2010.

The disputed domain name wholly incorporates the FACEBOOK mark as its primary element and is therefore confusingly similar to the Complainant’s mark under the Policy. The additional inclusion of the English word “payments” in the disputed domain name does not detract from this finding of confusing similarity.

As a result, the Panel finds that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

There is no doubt that the Complainant’s FACEBOOK mark falls into a category of very well-known marks and that it is highly distinctive. The Complainant has submitted that it has not licensed or authorised the Respondent to use the Complainant’s well known FACEBOOK mark, or its FACEBOOK PAY common law mark and does not have any legal relationship with the Complainant that would entitle the Respondent to use either mark. Further, it has asserted that neither the WhoIs data for the disputed domain name, nor the corresponding blank website at the disputed domain name, support a conclusion that the Respondent is known by the disputed domain name.

In addition, the Complainant has submitted that there is no evidence that the Respondent uses or is preparing to use the disputed domain name in connection with a bona fide offering of goods or services. It says that the Respondent has no legitimate reason for using the FACEBOOK mark within the disputed domain name. Further, it has alleged that the Respondent is using the disputed domain name passively in an inactive state which is not consistent with legitimate noncommercial or fair use. Finally, it has submitted that considering the degree of renown attaching to the Complainant’s FACEBOOK mark and the Respondent’s unauthorised use of it in the disputed domain name, there are no circumstances under which the Respondent’s use of the disputed domain could plausibly be bona fide or legitimate under the Policy.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to respond or to rebut this case and accordingly and also for the reasons set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on August 13, 2020 long after the Complainant’s FACEBOOK trade mark registrations in the European Union or the United States and many years after the Complaint had established its global business. The Complainant has also provided evidence of its “Facebook Pay” business and internet presence which was commenced in 2019, approximately a year prior to the registration of the disputed domain name. Being one of those marks that falls into the category of being very well-known in most countries in the world, it is extremely difficult to imagine that the Cyprus based Respondent was not well aware at the date of registration of the disputed domain name of the Complainant’s FACEBOOK mark and social media business, if not also of the Complainant’s recently launched “Facebook Pay” business. It is therefore most likely in the Panel’s view that the Respondent registered the disputed domain name opportunistically and in bad faith.

The disputed domain name resolves to a blank website and does not appear to have been used to date. On this basis it appears to the Panel that the Respondent is making a passive holding of the disputed domain name. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition sets out the factors that have been considered relevant by previous panels in applying the passive holding doctrine to infer use in bad faith and these 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.

Clearly, the Complainant’s FACEBOOK mark is highly distinctive and extremely well-known worldwide. The Respondent has failed to respond or to explain its registration of the disputed domain name. Further, the Respondent used a privacy service in an attempt to conceal its identity. The Complainant’s FACEBOOK mark is so distinctive and so well-known that any use in a domain name, other than for noncommercial fair use purposes, would necessarily be assumed by Internet users as having been authorised by, or being associated with the Complainant. Intended good faith use by the Respondent, noting the composition of the disputed domain name and its similarities with the Complainant’s “Facebook Pay” business, in circumstances that such use has not been authorised by the Complainant, is highly implausible. Each of the criteria having been met for a finding of passive holding in bad faith the Panel finds that the disputed domain name has been used in bad faith.

Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith and that the Complaint succeeds under this element of the Policy.

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 <facebookpayments.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: April 26, 2021