WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Online Admin, DotBadger Domains
Case No. D2021-1210
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Online Admin, DotBadger Domains, Czech Republic.
2. The Domain Names and Registrars
The disputed domain name <facebookforum.com> is registered with Super Registry Ltd.
The disputed domain name <juegosfacebook.com> is registered with NameScout Corp. (Super Registry Ltd. and Name Scout Corp. are hereinafter collectively referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 20, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain name. On April 27, 2021, the Registrars transmitted by email to the Center their verification responses 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 April 27, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 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 April 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021.
The Center appointed Andrea Mondini as the sole panelist in this matter on May 25, 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 is a leading provider of online social-media and social-networking services. It was founded in 2004 and has today approximately 1.84 billion daily active users. The Complainant’s website “www.facebook.com” is among the top-10 most visited websites worldwide.
The Complainant owns, inter alia, the United States trademark no. 3041791, FACEBOOK, registered on January 10, 2006, and the European Union Trade Mark no. 005722392 FACEBOOK, registered on April 29, 2008.
The disputed domain names <facebookforum.com> and <juegosfacebook.com> were registered on July 31, 2017, and March 24, 2018, respectively.
The disputed domain name <facebookforum.com> resolves to a webpage with sponsored links mentioning misspellings of the Complainant’s trademark and stating that the disputed domain name is for sale.
The disputed domain name <juegosfacebook.com> resolves to a webpage with sponsored links stating “social media”.
5. Parties’ Contentions
The Complainant contends as follows:
The disputed domain names are confusingly similar to the FACEBOOK trademark in which the Complainant has rights, because they incorporate this trademark in its entirety, and the addition of the words “forum” and “juegos” (which means “games” in Spanish) is not sufficient to avoid confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not been authorized by the Complainant to use this trademark. Both disputed domain names resolve to parking pages displaying pay-per-click links, which cannot constitute a bona fide offering of goods or services.
The disputed domain names were registered in bad faith because it is inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s famous FACEBOOK trademark at the time it registered the disputed domain names.
The use of the disputed domain names to redirect users to parking pages displaying sponsored links constitutes use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns trademark registrations for its FACEBOOK trademark.
The Panel notes that the disputed domain names incorporate in their entirety the FACEBOOK trademark. The addition of the words “forum” and “juegos” (which means “games” in Spanish), respectively, does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
For these reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark FACEBOOK.
The first element of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant states it has not authorized the Respondent to use the trademark FACEBOOK. The Panel does not see any contrary evidence from the record. Moreover, both disputed domain names resolve to parking pages displaying pay-per-click links targeting the Complainant, which cannot constitute a bona fide offering of goods or services. See section 2.9 of the WIPO Overview 3.0.
In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
The Complainant has shown to the satisfaction of the Panel that its FACEBOOK trademark is famous worldwide.
In the view of the Panel, it is inconceivable that the Respondent could have registered the disputed domain names without knowledge of the Complainant’s famous trademark. In the circumstances of this case, this is evidence of registration in bad faith.
The use of the disputed domain names to resolve to parking pages displaying sponsored links constitutes use in bad faith. By using the disputed domain names in such a manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s FACEBOOK trade mark as to the source, sponsorship, affiliation, or endorsement of the links displayed on the websites to which the disputed domain names resolve, which constitutes use in in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel thus finds that the disputed domain names were registered and are being used in bad faith.
The third element of paragraph 4(a) of the Policy has been met.
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 <facebookforum.com> and <juegosfacebook.com> be transferred to the Complainant.
Date: May 31, 2021