WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. fan wu
Case No. D2021-2594
1. The Parties
Complainant is Facebook, Inc., United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
Respondent is fan wu, China.
2. The Domain Name and Registrar
The disputed domain name <facebookaccountfb.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 August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 on August 18, 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 Respondent 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 did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2021.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 20, 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
Complainant is a company organized under the laws of the United States, which provides online social networking services, such as the worldwide well-known “Facebook” social network.
Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “Facebook”, inter alia, the following:
- Word mark FACEBOOK, United States Patent and Trademark Office (USPTO), registration number: 3,122,052, registration date: July 25, 2006, status: active, in class 38;
- Word/design mark FACEBOOK, International registration including the jurisdiction of China, registration number: 1075094, registration date: July 16, 2010, status: active, in class 09, 35, 36, 38, 41, 42, and 45;
- Word mark FB, USPTO, registration number: 4,659,777, registration date: December 23, 2014, status: active, in class 35.
Moreover, Complainant has evidenced to own numerous domain names relating to its FACEBOOK trademark, inter alia, the domain name <facebook.com> which resolves to Complainant’s “Facebook” social network website available at “www.facebook.com”, ranked consistently as one of the most visited websites in the world.
Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of China, who registered the disputed domain name on June 17, 2019. Complainant has demonstrated that the disputed domain name resolved to a website at “www.facebookaccountfb.com” set up in the Chinese language, which displayed, inter alia, Complainant’s word mark FACEBOOK and its official “f” logo design. At the time of this decision, the disputed domain name redirected to a third party website at “www.alashan99.com”. Comparing these two websites at “www.facebookaccountfb.com” and at “www.alashan99.com” respectively, their contents are the same.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that its FACEBOOK trademarks are highly distinctive and well-known throughout the world, while Respondent is a known cybersquatter who has a history of targeting famous and distinctive trademarks.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s FACEBOOK and FB trademarks, as it incorporates the textual components of both trademarks and adds the descriptive term “account”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not licensed or authorized Respondent to use Complainant’s FACEBOOK and/or FB trademarks, (2) Respondent was identified by the Registrar as “fan wu” and, therefore, apparently is not commonly known by the disputed domain name, (3) Respondent’s use of the disputed domain name apparently is commercial in nature, and, therefore, neither noncommercial nor fair use as set forth by paragraph 4(c)(iii) of the Policy, and finally (4) Respondent uses the disputed domain name to impersonate Complainant and trick prospective consumers who will believe they are accessing a website affiliated or associated with Complainant, and such use may not be considered bona fide offering of goods or services within the meaning of the Policy. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Respondent has registered the disputed domain name that prominently includes both of Complainant’s famous trademarks FACEBOOK and FB, (2) Respondent uses the disputed domain name to impersonate Complainant and to create a likelihood of confusion with Complainant and its trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <facebookaccountfb.com> is confusingly similar to the FACEBOOK and FB trademarks in which Complainant has rights.
The disputed domain name incorporates the FACEBOOK and FB trademarks in their entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “account”, which even points to Complainant and its core business, does not dispel the confusing similarity arising from the incorporation of Complainant’s FACEBOOK and FB trademarks in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s FACEBOOK and/or FB trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “facebook” and/or “fb” on its own. To the contrary, Respondent obviously runs a website under the disputed domain name which displays, inter alia, Complainant’s word mark FACEBOOK and its official “f” logo design without any permission to do so, but rather in an attempt to create a likelihood of confusion with Complainant and its own Internet presence, which may neither be considered as a bona fide offering of goods or services nor as a noncommercial or fair use of the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The circumstances to this case, such as the particular composition of the disputed domain name including both Complainant’s FACEBOOK and FB trademarks as well as the undisputed worldwide fame thereof, leave no reasonable doubt that Respondent was fully aware of Complainant’s rights in such trademarks when registering the disputed domain name, and that the latter is clearly directed to these trademarks. Moreover, using the disputed domain name, which is confusingly similar to Complainant’s FACEBOOK and FB trademarks, to run a website which prominently displays Complainant’s word mark FACEBOOK and its official “f” logo design without any permission to do so, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s FACEBOOK and FB trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <facebookaccountfb.com> be transferred to Complainant.
Stephanie G. Hartung
Date: September 28, 2021