WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Jeremy Conway
Case No. D2021-2649
1. The Parties
Complainant is Facebook, Inc., United States of America (the “United States” or “U.S.”), represented by Tucker Ellis, LLP, United States.
Respondent is Jeremy Conway, United States.
2. The Domain Name and Registrar
The disputed domain name <securing-facebook.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 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 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 24, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 24, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 8, 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 global provider of online social networking services. Launched in 2004, Facebook currently has over 1 billion daily active accounts. Complainant’s main website, “ www.facebook.com”, is currently ranked one of the top ten most visited websites in the world. Complainant owns several registrations for the FACEBOOK mark, including in the United States where Respondent lists an address of record. These include, among others, U.S. Registration No. 3122052 (registered in 2006) and European Union Registration No. 009151192 (registered in 2010).
The disputed domain name <securing-facebook.com> was registered on August 12, 2014. The disputed domain name is not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainants’ trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the FACEBOOK mark, which is “well-known” and “obviously connected with Complainant”. Complainant contends that Respondent has incorporated Complainant’s well-known FACEBOOK mark into the disputed domain name, and merely added the descriptive term, “securing” with a hyphen, which calls to mind the security features that Complainant offers its FACEBOOK users. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name <securing-facebook.com> is identical or confusingly similar to a trademark or service mark in which Complainants has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates Complainant’s FACEBOOK mark and merely added the term, “securing”, along with a non-source-identifying hyphen.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with an additional term, including with the addition of a hyphen, does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (<microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (<walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (<ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest”, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
The Panel notes that the construction of the disputed domain name (i.e., the Complainant’s trademark combined with a preliminary term) cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview 3.0, section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a panel must examine “the totality of the circumstances”, including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity, and/or replies to the complaint. Respondent here did not formally respond to the Complaint, nor to prior correspondence from Complainant. Furthermore, Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world. A number of prior UDRP panels have found Complainant’s FACEBOOK mark to be extremely well known. See, for example, Facebook Inc. v. Emma Boiton, WIPO Case No. D2016-0623 (finding FACEBOOK to be “one of the most famous online trademarks in the world”); and Facebook Inc., WhatsApp Inc., Instagram, LLC, and Oculus VR, LLC v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150 (transferring, inter alia, <facebgok.com>, <facebks.com>, <facebokep.com>, <faceboki.com>, <facebuki.com>, <facetagram.com>, <fbooklogin.com>, <thefacebok.com>). Given the level of exposure of Complainant’s marks and of its social networking services, the Panel would be hard pressed to find that Respondent was not aware of them at the time of registering the disputed domain name.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph (4)(a)(iii) of the Policy.
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 <securing-facebook.com> be transferred to Complainant.
Date: October 22, 2021