WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Contact Privacy Inc., Customer 0159737540 / kadir ata, facebooklivesecurity

Case No. D2021-3331

1. The Parties

Complainant is Facebook, Inc., United States of America (the “United States”), represented by Tucker Ellis, LLP, United States.

Respondent is Contact Privacy Inc., Customer 0159737540, Canada / kadir ata, facebooklivesecurity, Turkey.

2. The Domain Name and Registrar

The disputed domain name <facebooklivesecurity.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 11, 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 October 14, 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 October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2021.

The Center appointed José M. Checa as the sole panelist in this matter on December 14, 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.

The Panel also notes that the verification received from the Registrar showed that the expiry date of the disputed domain name was October 21, 2021, i.e., during the course of this dispute. The Registrar also informed the Center that the disputed domain name would be on Registrar lock until the end of the present dispute.

The Panel finds that all procedural steps have been properly complied with in order to proceed to a decision (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.20).

4. Factual Background

Complainant operates the Facebook social networking website and mobile application, and it owns numerous trademark registrations in the United States and other countries around the world for the FACEBOOK mark. Among others, Complainant owns United States Trademark Registration No. 3122052, which was registered on July 25, 2006, claiming first use in 2004. It also owns many domain names, including <facebook.com>, <facebook.org>, and <facebook.net>.

The disputed domain name was registered on October 21, 2020 and it is inactive.

5. Parties’ Contentions

A. Complainant

Complainant has provided evidence of trademark registrations for the FACEBOOK mark around the world.

Complainant operates the Facebook social networking website and mobile application, and its brand is unquestionably famous and recognized around the world as signifying high-quality, authentic goods and services provided by Complainant. The FACEBOOK mark ranked 13th in Interbrand’s current Best Global Brands report.

According to the Complaint, the disputed domain name is confusingly similar to the trademark FACEBOOK, the addition of the terms “live” and “security” being insufficient to avoid similarity, especially given the fact that those terms are descriptive of and relevant to Complainant’s services. The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name is irrelevant to the confusingly similar analysis.

Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s FACEBOOK mark. Complainant confirms that it has no legal relationship with Respondent and that Respondent is not commonly known by the disputed domain name. As the disputed domain name is inactive, Complainant argues that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.

Complainant further adds that Respondent – given the fame of Complainant’s FACEBOOK mark – was or should have been aware of the FACEBOOK trademark prior to registering the disputed domain name and also, that there are no circumstances under which Respondent’s use of the disputed domain name could plausibly be in good faith under the Policy (the use of the word “security” in the disputed domain name would be of particular concern, since the disputed domain name could suggest to unsuspecting Facebook users that Respondent provides help with regards to security for Facebook and/or Facebook Live). In addition, the registration of a confusingly similar domain name that is so obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. Complainant further argues that it has long been held in UDRP decisions that the passive holding of a domain name that incorporates a registered trademark, without a legitimate purpose, may indicate that the disputed domain name is being used in bad faith. Respondent’s failure to use the disputed domain name for any purpose is evidence of bad faith registration and use of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has provided evidence of its trademark registrations for FACEBOOK establishing clear trademark rights in the mark. The Panel also acknowledges that FACEBOOK is a famous brand.

The Panel finds that for the purpose of considering whether the disputed domain name is identical or confusingly similar to Complainant’s FACEBOOK mark, the gTLD “.com” is disregarded under the first element confusing similarity test (WIPO Overview of 3.0, section 1.11.1). The Panel also finds that the addition of the terms “live” and “security” does not prevent a finding of similarity between Complainant’s trademark and the disputed domain name (WIPO Overview 3.0, section 1.8).

Complainant’s entire mark is clearly recognizable in the disputed domain name. The Panel accordingly finds that the disputed domain name is confusingly similar to Complainant’s trademark as required by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has put forward unrebutted assertions that it has not granted any license or authorization to Respondent to register the disputed domain name or otherwise make use of its trademark, or that Respondent is not commonly known by the disputed domain name.

The fact that the disputed domain name is inactive cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, particularly where a famous trademark is fully incorporated in the disputed domain name along with additional terms related to or connected with Complainant’s activities (WIPO Overview 3.0, section 2.5.1).

The Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests to the disputed domain name (WIPO Overview 3.0, section 2.1). Respondent is in default and thus, it has not put forward any circumstance that would indicate any right or legitimate interest to the disputed domain name.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As pointed out in the Complaint, based on the wide use of Complainant’s FACEBOOK brand, it is very unlikely that Respondent was not aware of Complainant’s brand. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).

In addition, even if the disputed domain name is inactive, circumstances present in this case such as (i) the nature of the disputed domain name (widely used corporate brand followed by dictionary terms related to or connected with Complainant’s activities), (ii) a clear absence of rights or legitimate interests coupled with no explanation for Respondent’s choice of the disputed domain name, (iii) the failure of Respondent to provide any evidence of actual or contemplated good-faith use, and (iv) the implausibility of any good faith use to which the disputed domain name may be put (as pointed out by Complainant, use of the word “security” in the disputed domain name would be of particular concern as Internet users would understand that Respondent provides help with regards to security for Facebook and/or Facebook Live) further support a finding that Respondent’s registration and use of the disputed domain name was in bad faith (WIPO Overview 3.0, section 3.3).

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

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, <facebooklivesecurity.com> be transferred to Complainant.

José M. Checa
Sole Panelist
Date: December 28, 2021