WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Wasem Fazy
Case No. D2021-3177
1. The Parties
The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Wasem Fazy, Iraq.
2. The Domain Name and Registrar
The disputed domain name <facebookonlinesupport.org> is registered with 101domain GRS Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 30, 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 October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. The Respondent sent two email communications on October 2 and 4, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 10, 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 one of the world’s leading provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family and to share information, mainly via its website available at “www.facebook.com”. As of November 2020, the Complainant has approximately 1.82 billion daily active users, of whom approximately 85% are outside the United States and Canada.
The Complainant is the owner of numerous trademark registrations throughout the world, including United States Trademark Registration No. 3041791 (registered on January 10, 2006), and International Trademark Registration No. 1232015 (registered on December 15, 2014), both for the word trademark FACEBOOK.
The Complainant is the owner of numerous domain names consisting of or including the FACEBOOK trademark, under various generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”), including <facebook.com>, <facebook.org>, and <facebook.us>.
The disputed domain name was registered on January 21, 2021. The Complainant sent a cease and desist letter to the Respondent through the Registrar’s online form, said to be sent on July 26, 2021, notifying the Respondent of the Complainant’s trademark rights and requesting, inter alia, voluntary transfer of the disputed domain name, to which the Respondent did not reply. The Complainant has provided a screenshot of a redirect check, taken on September 5, 2021, showing that the disputed domain name redirected to a website at “www.wasseem.org/تسجيل/”. The Complainant has also provided screenshots, taken on September 22, 2021, of the pages of the website at “www.wasseem.org/تسجيل/”, along with an English translation of some of those pages. These pages show a blog-style website in Arabic, with posts about the Complainant’s services, and about other services including those of a competitor of the Complainant. There is no disclaimer on the website to clarify the lack of relationship with the Complainant. At the time of this decision the disputed domain name resolves to a parking page offering website-building services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name incorporates the Complainant’s FACEBOOK trademark in its entirety, with the addition of the descriptive terms “online” and “support”, and the Complainant’s FACEBOOK trademark is clearly recognizable as the leading element of the disputed domain name; and (ii) the addition of the gTLD “.com” [which is clearly an error, and should be read as “.org”] may be disregarded for the purpose of assessing confusing similarity, as it is a standard requirement of registration.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not a licensee of the Complainant, has not been otherwise authorized by the Complainant to make any use of its FACEBOOK trademark in a domain name or otherwise, and has no prior business relationship with the Complainant whatsoever; (ii) the Complainant’s brand assets guidelines expressly prohibit the registration of domain names incorporating any of its trademarks; (iii) at the time of filing the Complaint, the disputed domain name forwarded to a website that offered blog-format information, including technical assistance, related specifically to the Complainant’s services; (iv) given that the disputed domain name includes the Complainant’s trademark as well as the descriptive terms “online” and “support”, there cannot be a bona fide offering of goods or services as Internet users will likely believe that the Respondent is connected to the Complainant, especially as there is no disclaimer on the website ultimately associated with the disputed domain name; (v) the website to which the disputed domain name ultimately resolves also contains information on other topics and assistance in relation to Tik Toks products, one of the Complainant’s competitors; (vi) the Respondent cannot credibly claim to be commonly known by the disputed domain name, or a name corresponding to it, as the identity of the Respondent in the WhoIs record is masked, and the identity of the Respondent as revealed by the Center is “Wasem Fazy”, which bears no resemblance to the disputed domain name whatsoever; (vii) the Respondent is using the disputed domain name to misleadingly divert Internet users to a website promoting the Respondent’s commercial activities, which strongly suggests that the Respondent’s intention is primarily to unfairly exploit the goodwill and reputation attached to the Complainant’s trademark by creating a false impression of association with the Complainant; and (viii) the inclusion of the terms “online” and “support” alongside the Complainant’s FACEBOOK trademark carries with it a high risk of implied affiliation with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s FACEBOOK trademark when it acquired the disputed domain name in 2021, as there were approximately 2.8 billion users worldwide at the last quarter of 2020; (ii) the content of the website resolving from the disputed domain name demonstrates actual knowledge of the Complainant and its trademark, as it includes a section offering assistance with the Complainant’s services; (iii) the Respondent registered the disputed domain name having no authorization to make use of the Complainant’s trademark in a domain name or otherwise, thereby creating a misleading impression of association with the Complainant, in bad faith; (iv) the Respondent is using the disputed domain name to redirect to a website to promote business activities for commercial gain, which is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or associated services; (v) there is nothing on the website resolving from the disputed domain name in the way of a disclaimer or notice to indicate that the Respondent is not affiliated with the Complainant; and (vi) the Respondent’s failure to respond to the Complainant’s cease and desist letter further supports a finding of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions. However, the Respondent contacted the Complainant’s representative by email on two occasions.
In the first email, sent on October 2, 2021, the Respondent stated, amongst other things: “I am afraid there’s some inaccuracy with your claims, and the domain redirect is not intended for business purposes, otherwise how can someone wants to promotes SEO services targets people who have little knowledge in Internet that they can’t even sign into their Facebook accounts and need help with that? … You can have the domain for yourself and call it a day. I am not interested in keeping it. Therefore, let’s work in this direction and save time.” On October 4, 2021, the Complainant’s representative replied to the Respondent, saying: “Our client has instructed us to allow the case to continue.”
In the Respondent’s second email communication, sent on October 4, 2021, the Respondent stated: “How about your client drops the case and then I can sell it to them at a reasonable price of only $14736 … Other solution is just to pay me something off the table and I’ll not post a response at all, a small fee of $5000 in Crypto, which you are aware I love so much.” The Complainant’s representative replied on October 4, 2021, informing the Respondent that any communication by a Party to another Party should be copied to the Center.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the gTLD “.org” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark FACEBOOK followed by the word string “onlinesupport”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the word string “onlinesupport” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its FACEBOOK trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a blog-style website containing posts about the Complainant’s business and the business of one of the Complainant’s competitors. Given the confusing similarity of the disputed domain name to the Complainant’s trademark, the absence of any relationship between the Respondent and the Complainant, and the failure of the Respondent to make clear that it is not associated with the Complainant, such a use of the disputed domain name is neither a bona fide use nor legitimate noncommercial or fair use of the disputed domain name. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its FACEBOOK trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the disputed domain name consists of the Complainant’s trademark followed by a word string (“onlinesupport”) that relates to the Complainant’s services, and that it has been used to publish blog posts about the Complainant’s services. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent: (i) has used the disputed domain name in an attempt to attract Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant; and (ii) offered to sell the disputed domain name to the Complainant for a sum likely in excess of out-of-pocket expenses. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <facebookonlinesupport.org>, be transferred to the Complainant.
Andrew F. Christie
Date: November 24, 2021