WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-0908

1. The Parties

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

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <fbswagstore.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2021, 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 March 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2021.

The Center appointed Mihaela Maravela, as the sole panelist in this matter on April 27, 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 contends that it is a leading provider of online social-media and social-networking services. Founded in 2004, the Complainant’s mission is to give people the power to build community and bring the world closer together. People use the Complainant’s services to stay connected with friends and family, to discover what is going on in the world, and to share and express what matters to them. Today, Facebook has more than 2.8 billion monthly active users and 1.84 billion daily active users on average worldwide (as of December 31, 2020). Its main website “www.facebook.com” is currently ranked as the 7th most visited website in the world according to information company Alexa.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word FB in various jurisdictions throughout the world, including the following:

- the European Union Trademark for FB with registration number 008981383, registered on August 23, 2011;

- the United States of America Trademark for FB with registration number 4,782,235 registered as of July 28, 2015.

The Complainant is the owner of numerous domain names consisting of the term FACEBOOK, for instance, <facebook.com>, or of the term FB such as <fb.com>, <fb.co>, etc. The Complainant is also the registrant of the domain name <facebookswagstore.com>, from which it operates an online store for its employees, offering for sale Facebook-branded merchandise, including clothing and accessories, cups and mugs, sports and leisure goods, bags, electronics, stationary and pens, stickers, magnets and keyrings.

The disputed domain name was registered on October 1, 2020 and according to the evidence produced by the Complainant resolves to a parking page displaying sponsored links to various third-party products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has established rights in the trademark FB, as it owns numerous trademark registrations for FB in jurisdictions throughout the world, and that the disputed domain name is confusingly similar to the Complainant’s FB trademark. The disputed domain name incorporates the Complainant’s FB trademark as its leading element, together with the words “swag store”, ostensibly as a reference to the Complainant’s online store for the Complainant’s employees. The inclusion of the descriptive words “swag store” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s FB trademark, which remains clearly recognisable.

Further, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its FB trademark, in a domain name or otherwise. The Respondent is not making a bona fide use of the disputed domain name as it resolves to a parking page displaying sponsored links, from which the Respondent presumably derives click-through revenue. The Respondent cannot credibly claim to be commonly known by the disputed domain name and it is not making any legitimate noncommercial or fair use of the disputed domain name.

In addition, with regard to the third element, the Complainant argues that given the continuous and extensive use since at least 2011, the Complainant’s FB trademark acquired considerable goodwill and reputation; hence, the Respondent could not credibly argue that it did not have prior knowledge of the Complainant’s FB trademark at the time of the registration of the disputed domain name in 2020. Moreover, the Complainant argues that the registration of the disputed domain name comprising the Complainant’s FB trademark together with the terms “swag store” cannot be merely coincidental. Rather, the Respondent appears to have registered the disputed domain name on account of its perceived connection with the Complainant. In what concerns the use of the disputed domain name, the Complainant shows that the disputed domain name resolves to a parking page displaying sponsored links to various third-party goods and services and it has also been subject to dynamic redirection, including to a website offering a third-party Google Chrome extension for download. By doing so, the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s FB trademark.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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” paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i)that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the FB trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights.

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Also, according to section 1.7 of the WIPO Overview 3.0, “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 confusingly similar to that mark for purposes of UDRP standing”.

Here the disputed domain name wholly incorporates the Complainant’s FB trademark in addition to the words “swag store”. This addition does not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case, the Complainant has established a prima facie case that it holds rights over the trademark FB and claims that the Respondent has no legitimate interests or rights to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

According to the unrebutted evidence put forward by the Complainant, the disputed domain name redirects Internet traffic to a sponsored listings website in an area related to certain commercial activities carried by the Complainant. This does not represent bona fide offering of goods or services that would demonstrate rights or legitimate interests in the disputed domain name as required by the Policy (section 2.9 of the WIPO Overview 3.0).

With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

According to the unrebutted assertions of the Complainant, its FB trademark was widely used in commerce well before the registration of the disputed domain name in October 2020. The disputed domain name is confusingly similar with the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why he registered the disputed domain name.

As the website at which the disputed domain name redirects feature sponsored links in certain areas where the Complainant’s undertakes commercial activity and given the confusing similarity between the FB trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably, the Respondent intended to benefit from the confusion created. It is likely that the Respondent earns income when Internet users click on the links in search of the Complainant’s services. This amounts to use in bad faith.

In addition, the following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name:

- the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN, WIPO Case No. D2013-2100;

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy;

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name.

Moreover, the Complainant’s trademark FB has been extensively used by the Complainant and had significant goodwill and reputation at the registration of the disputed domain name (see e.g. Facebook, Inc. v. Domain Administrator, See PrivacyGuardian.org. / cou, WIPO Case No. D2020-3117). The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s well-known trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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, <fbswagstore.com>, be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: May 11, 2021