WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Wu Xiao Liang (吴晓亮)

Case No. D2021-2572

1. The Parties

Complainant is Facebook Inc., United States of America (“U.S.”), represented by Hogan Lovells (Paris) LLP, France.

Respondent is Wu Xiao Liang (吴晓亮), China.

2. The Domain Name and Registrar

The disputed domain name <facebookfinancial.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 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 Complainant on August 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on August 18, 2021.

On August 13, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On August 13, 2021, Complainant confirmed its request that English be the language of the administrative proceeding. On August 16, 2021, Respondent’s comment on the language of the administrative proceeding was received, which requested that Chinese be the language of the administrative proceeding.

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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. Respondent’s informal communications were received by the Center on September 1, 2021 and September 6, 2021 respectively.

The Center appointed Yijun Tian as the sole panelist in this matter on September 17, 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

A. Complainant

Complainant, Facebook, Inc., is a company incorporated in the U.S. Founded in 2004, Complainant is the world’s leading provider of online social networking services. It allows Internet users to connect with friends, family, colleagues, and others, and to share information mainly via its website available at “www.facebook.com”. Its main website “www.facebook.com” is currently ranked as the 7th most visited website in the world, according to information company Alexa. Facebook is also available for mobile devices and is the 2nd most downloaded mobile application worldwide as per App Annie's Top Apps Ranking in 2021.

Complainant is the exclusive owner of numerous FACEBOOK trademarks worldwide, including the U.S. Trademark registered on January 10, 2006 (the U.S. Trademark registration number 3041791), and the Chinese Trademark registered on September 21, 2009 (the Chinese Trademark registration number 5251162). Complainant also registered numerous domain names which contain the FACEBOOK trademark, such as <facebook.com>, <facebook.org>, <facebook.biz>, <facebook.cn>, and <facebook.us>.

B. Respondent

Respondent is Wu Xiao Liang (吴晓亮), China. The disputed domain name <facebookfinancial.com> was registered on June 7, 2020. The disputed domain name resolves to a website which is currently inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <facebookfinancial.com> is confusingly similar to Complainant’s FACEBOOK trademarks. The disputed domain name incorporates the FACEBOOK mark in its entirety with the addition of the dictionary term “financial” under the generic Top-Level Domain (“gTLD”) “.com”. The addition of the term “financial” is not sufficient to eliminate the confusing similarity. The gTLD “.com” is irrelevant when assessing whether a domain name is identical or confusingly similar to a mark as it is a functional element.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent replied to Complainant's contentions in an email dated September 6, 2021, stating, inter alia, that he registered the disputed domain name entirely for the legitimate use on his project - “Face + book financial”, which has been terminated; that he has not registered the disputed domain name for sale, nor did he use the disputed domain name to gain profit or harm Complainant; that the disputed domain name means "face the book"; and that the disputed domain name had been registered before, but not for many years, and Complainant attempts to get the disputed domain name back by using its influence.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name <facebookfinancial.com> is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for following reasons:

(a) The disputed domain name consists of Latin characters, such as the English term “financial”, rather than Chinese characters;

(b) The fact that Respondent was able to reply to Complainant’s infringement notice and cease and desist letter (Annex 10 to the Complaint), which were both prepared in English, strongly suggests that Respondent has a good understanding of the English language;

(c) It would be disproportionate to require Complainant, which operates primarily in English, to translate and submit the present Complaint in Chinese as this would result in additional expenses and unnecessary delay for Complainant.

Respondent sent email communications in Chinese, and has objected to English being the language of proceeding, and requested that Chinese be the language of the proceeding for following reasons:

(a) The Registrar of the disputed domain name is in China, and there was no English capability requirement when registering the disputed domain name;

(b) Respondent is a Chinese resident, and his native language is Chinese. China is not a country where English is the native language;

(c) Respondent cannot understand the meaning in the English litigation, and ambiguity may arise if translation software is used.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). Section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (See also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the U.S., and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name <facebookfinancial.com> includes Latin characters and particularly English words (“face”, “book”, and “financial”), and is registered in the gTLD space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters and English words, rather than mere Chinese scripts; (b) Respondent was able to reply to Complainant’s infringement notice and cease and desist letter, which were both prepared in English (Annex 10 to the Complaint); (c) the Center has notified Respondent of the proceeding in both Chinese and English; and (d) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese.

Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the FACEBOOK marks acquired through registration. The FACEBOOK marks have been registered in the U.S. since 2006, and registered in China since 2009. The disputed domain name <facebookfinancial.com> comprises the FACEBOOK mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the term “financial”, and the gTLD “.com”. This does not prevent a finding of confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Further, in relation to the gTLD, section 1.11.1 of the WIPO Overview 3.0 states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”

Thus, the Panel finds that disregarding the term “financial”, as well as the gTLD “.com”, the disputed domain name is otherwise identical to the FACEBOOK mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1, and cases cited therein).

Complainant has rights in the FACEBOOK marks in the U.S. since 2006 and in China since 2009, which precede Respondent’s registration of the disputed domain name (2020). According to the Complaint, Complainant is the world’s leading provider of online social networking services. It allows Internet users to connect with friends, family, colleagues, and others, and to share information mainly via its website available at “www.facebook.com”. Its main website “www.facebook.com” is currently ranked as the 7th most visited website in the world, according to information company Alexa.

Moreover, Respondent is not an authorized dealer of Facebook branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “facebook” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the FACEBOOK marks or to apply for or use any domain name incorporating the FACEBOOK marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2020, long after the FACEBOOK marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s FACEBOOK marks;

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the FACEBOOK marks with regard to its products or services. Complainant has registered its FACEBOOK marks in the U.S. since 2006, and in China since 2009. As introduced above, its main website “www.facebook.com” is currently ranked as the 7th most visited website in the world, according to information company Alexa. Facebook is also available for mobile devices and is the 2nd most downloaded mobile application worldwide as per App Annie's Top Apps Ranking in 2021. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name.

The Panel therefore finds that the FACEBOOK mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Used in Bad Faith

The disputed domain name is currently inactive. In terms of inactive domain names, section 3.3 of the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.”

Section 3.3 of the WIPO Overview 3.0 further states:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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.”

As discussed above, Complainant’s FACEBOOK marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <facebookfinancial.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: October 11, 2021