WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Domain Administrator, See PrivacyGuardian.org / Hongjiang Chen
Case No. D2021-3074
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Hongjiang Chen, China.
2. The Domain Name and Registrar
The disputed domain name <facebookvideodownloaderonline.net> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 the Complainant on September 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 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 the Respondent of the Complaint, and the proceedings commenced on September 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 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, Facebook Inc., was founded in 2004 and currently is a world leading provider of online social networking services.
The trademark FACEBOOK was registered by the Complainant in several regions of the world, including in the United States (registration numbers 3,122,052; 3,881,770; and 4,441,540, registered respectively on July 25, 2006; November 23, 2010; and November 26, 2013) and in the European Union (registration numbers 009151192, 009776618, and 1075094, registered respectively on December 17, 2010; November 02, 2011; and July 16, 2010).
The disputed domain name was registered on April 7, 2021.
The disputed domain name does not currently resolve to any active website. However, the Complainant brought evidence that the disputed domain name was previously linked to a website that prominently displayed the Complainant’s Facebook mark, together with dynamic advertisements of a software designed to download video contents from the Complainant’s social networking platform.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name plainly misappropriates sufficient textual components from the Complainant’s FACEBOOK mark that an ordinary Internet user who is familiar with the FACEBOOK mark would, upon seeing the disputed domain name, think an affiliation exists between that domain name and the Complainant and/or its FACEBOOK mark. Numerous prior UDRP panels have held that the addition of a descriptive term to a mark fails to distinguish a domain name from a complainant’s mark. The Respondent has basically added the terms “video” “downloader” and “online” to the Complainant’s exact FACEBOOK mark. The resulting disputed domain name is not sufficiently distinguishable from the Complainant’s Facebook mark so as to remove it from the reach of the Policy. Lastly, the addition of a generic Top-Level Domain (“gTLD”) has no distinguishing value in the Policy.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. Under the Policy, once a complainant asserts a prima facie case against the respondent, proving the respondent has no rights or legitimate interest in the domain name, the respondent bears the burden of production that it has rights or legitimate interests in the subject domain name pursuant to the Policy. A complainant establishes a prima facie case by a showing that a respondent (1) is not authorized to use the marks, and (2) is not known by a complainant’s marks. Here, the Complainant has not licensed or authorized the Respondent to use the Complainant’s FACEBOOK mark, nor does the Respondent have any legal relationship with the Complainant that would entitle the Respondent to use the FACEBOOK mark. Further, neither the WhoIs data for the disputed domain name nor the corresponding website available at the disputed domain name supports that the Respondent is known by the disputed domain name. Additionally, the Complainant – who monitors use of its FACEBOOK mark – is not aware of the Respondent being known by the disputed domain name in any other way. The Respondent has no legitimate reason for using the FACEBOOK mark within the disputed domain name, and instead, the Respondent is using the disputed domain name to host a webpage containing dynamic advertisements, including an advertisement that prompts the user to download software on the user’s computer, and an advertisement that induces the user to install a browser extension on the user’s computer – something the Complainant would never authorize. Importantly, the Complainant does not allow users to access or collect data using automated means without its prior permission, or attempt to access data that they do not have permission to access. The Respondent cannot demonstrate any of the factors that would support a legitimate interest in the subject disputed domain name under the Policy. UDRP panels have consistently held that the use of a domain name to host a commercial webpage comprised of sponsored links is not a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Moreover, given the fame of the Complainant’s FACEBOOK mark, and the Respondent’s unauthorized incorporation of the exact FACEBOOK mark into the disputed domain name, there are no circumstances under which the Respondent’s use of the disputed domain name could plausibly be in good faith under the Policy. Indeed, the Complainant’s brand guidelines expressly prohibit the use of its marks. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. It is well settled that the use of a domain name that is identical or confusingly similar to a complainant’s mark to host advertisements is evidence of bad faith. It is also settled that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. Because the FACEBOOK mark is so obviously connected with the Complainant and its well-publicized social networking services, and the disputed domain name clearly references this mark, the registration and use of the disputed domain name by the Respondent, which is in breach of the Complainant’s Terms of Service, and who has no connection with the Complainant, supports a finding of bad faith under the Policy. Under these circumstances, there is no conceivable use of the disputed domain name by the Respondent that could be legitimate. Further, the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights as evidenced by the Respondent’s use of the Complainant’s FACEBOOK mark on the resolving website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a 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 has no doubt that “Facebook” is a term directly connected with the Complainant’s online activities.
Annexes 10 and 11 to the Complaint show that the Complainant owns numerous trademark registrations for the term “Facebook” in many jurisdictions around the world since 2006.
The trademark FACEBOOK is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark merely by the addition of the terms “video”, “downloader”, and “online”, as well as of the gTLD extension “.net”.
Previous UDRP decisions have found that the mere addition of terms (such as “video downloader online”) to a trademark in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD extension such as “.net” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
Furthermore, the present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Respondent is capitalizing on exploiting advertisements, as well as reproducing the famous FACEBOOK mark and offering ways to download the Complainant’s content, without the Complainant’s authorization. As such, the risk of implied affiliation created by the construction of the disputed domain name preempts fair use, since it incorrectly suggests sponsorship or endorsement by the Complainant.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
By the time the disputed domain name was registered, the trademark FACEBOOK was already internationally registered and directly connected to the Complainant’s online activities.
Numerous prior UDRP panels have recognized the strength and renown of the Complainant’s trademark (Facebook, Inc. v. Xiamen eName Network Co., Ltd. / Shawn, Wang, WIPO Case No. D2015-1339; Facebook, Inc. v. Protection Domain, WIPO Case No. D2015-1152; Facebook, Inc. v. Cetinje s.r.o., WIPO Case No. D2014-1070; Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004; Facebook, Inc.v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin, WIPO Case No. D2013-2030; Facebook, Inc. v. Amjad Abbas, WIPO Case No. DME2010-0005; Facebook Inc. v. Usta Cafer, WIPO Case No. DES2009-0006; and Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007.
The Complainant provided evidence that the website linked to the disputed domain name reproduced the famous FACEBOOK trademark, hosted a varying advertisement redirecting users, and offered unauthorized tools that allowed users to download content from the Complainant platform.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainants’ trademark, as well as that the adoption of the FACEBOOK mark within the disputed domain name could be a mere coincidence.
Furthermore, the disputed domain name also hosted a dynamic advertisement, which seemingly changed upon each unique visit, and presumably redirected users once clicked on.
In doing so, the Respondent:
(i) created a likelihood of confusion with the Complainants’ trademark; and
(ii) potentially obtained revenue from this practice; and
(iii) deprived the Complainant from attending prospective users who were clearly looking for the Complainant’s online social network.
It is true that presently the disputed domain name does not resolve to an active website.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview”) 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
The non-collaborative posture of the Respondent, (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party well-known trademark, certainly cannot be used in benefit of the Respondent in this Panel’s opinion.
Such circumstances, including (d) the Respondent’s use of a privacy service, (e) the lack of any plausible good-faith interpretation for the adoption of the term “facebookvideodownloaderonline” by the Respondent, and (e) the evidence provided by the Complainant demonstration of previous uses of the disputed domain name, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <facebookvideodownloaderonline.net> be transferred to the Complainant.
Date: November 11, 2021