WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Meta Platforms, Inc. v. Registration Private, Domains By Proxy, LLC / Dornod Songuuli
Case No. D2021-4239
1. The Parties
The Complainant is Meta Platforms, Inc., United States of America (“U.S.”), represented by Tucker Ellis, LLP, U.S.
The Respondent is Registration Private, Domains By Proxy, LLC, U.S. / Dornod Songuuli, Mongolia.
2. The Domain Name and Registrar
The disputed domain name <facebookpagesecurity.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 December 16, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on December 16, 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 December 20, 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 December 22, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2022.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on January 28, 2022. 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 following facts and circumstances are to be found in the amended Complaint and its Annexures and, in the absence of challenge, can be accepted as background.
The Complainant operates the world-famous Facebook social networking website and mobile application. Facebook enables its users to create their own personal profiles and connect with each other on their personal computers and mobile devices. Facebook has more than one billion daily active accounts and over two billion monthly active users from all over the world.
The <facebook.com> website is currently ranked as the seventh most visited website in the world (according to information company Alexa).
Approximately 85 percent of the daily active Facebook users are outside the U.S. and Canada. Facebook’s social networking services are provided in more than 70 languages. The Facebook app is also available for mobile devices, and in recent years has consistently ranked among the top “apps” in the market.
The Complainant’s extensive common law trademark and service mark rights from its prior and extensive use of the FACEBOOK trademark plainly satisfies the Policy. Further, the Complainant’s multiple registrations of national effect also satisfy the Policy (Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205)
The Complainant offers several security features as part of its products, such as login alerts and two-factor authentication.
The Complainant also offers a feature which allows businesses, organizations, and public figures to create their own page where they can provide information and post updates. Facebook users can like or follow a page to continue to receiving updates provided by the business, organization, or public figure.
Moreover, the Complainant operates its own page for Facebook Security, accessible at <facebook.com/security>, which provides updates about how users can protect their information both on and off the Facebook social media platform.
The Complainant also owns the domain name <facebook-security.com>, which redirects to the Facebook Security Page.
The Complainant registered various trademarks for FACEBOOK in the U.S., including the Registration No. 3,122,052 on July 25, 2006, for services in classes 35 and 38. It also registered its FACEBOOK trademarks with the European Union, including Registration No. 1075094 on June 3, 2010, for goods and services in classes 9, 35, 36, 38, 41, 42 and 45.
On the other hand, the disputed domain name was registered with the Registrar on June 7, 2020.
According to the evidence from the Case File, the disputed domain name refers to an inactive website.
5. Parties’ Contentions
The Complainant contends as follows:
As appears from the factual background, the Complainant’s FACEBOOK trademark is known throughout the world. The fame of the FACEBOOK trademark has been confirmed in various previous UDRP decisions.
The addition of the descriptive terms “page” and “security” to FACEBOOK does not have any impact on the overall impression of the dominant part of the disputed domain name, being that of FACEBOOK.
Furthermore, the use of the generic Top-Level Domain (“gTLD”) “.com” mirrors that of the Complainant and further fosters the overall impression of the dominant portion of the disputed domain name. Accordingly, anyone seeing it would be bound to mistake it for a domain name relating to the Complainant.
It follows, so the Complainant contends, that the disputed domain name is clearly confusingly similar to the Complainant’s registered trademark FACEBOOK.
The Complainant contends further that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name, nor anything which suggests that it has been using FACEBOOK in any other way which would give it any right or legitimate interest in the disputed domain name. In addition, the Respondent has not identified itself by name but relied upon a privacy service.
It is clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark FACEBOOK. FACEBOOK is a famous trademark worldwide and any such user would violate the Complainant’s rights and not be legitimate.
It is highly unlikely that the Respondent would not have been aware of the Complainant’s legal rights in the disputed domain name containing the word “facebook” at the time of registration.
The Respondent is also not using the disputed domain name for a bona fide purpose but has intentionally chosen the disputed domain name based on the registered trademark to generate traffic and income from Internet users as it is offering it for sale or for rental or resolves to other sites, even those of the Complainant.
The Complainant owns the exclusive rights to the FACEBOOK mark, which it has used for over seventeen years. The Complainant’s use of the FACEBOOK trademark, in the U.S. and throughout the world, has been extensive, continuous, and substantially exclusive.
The Complainant has made, and continues to make, a substantial investment of time, effort, and expense in the promotion of its goods and services, and the FACEBOOK trademark. As a result of the Complainant’s efforts and use, the FACEBOOK trademark is inextricably linked with the products and services offered by the Complainant. The FACEBOOK trademark is ranked 15th in Interbrand’s current Best Global Brands report.
The FACEBOOK trademark is unquestionably famous and recognized around the world as signifying high-quality, authentic goods and services provided by the Complainant.
In addition to its extensive common law rights in the FACEBOOK trademark, the Complainant owns numerous registrations protecting the FACEBOOK trademark in the U.S. and around the world. Several of the Complainant’s U.S. registrations for the FACEBOOK trademark are detailed in the Complaint.
In addition to <facebook.com> and <facebook-security.com> domain names, the Complainant owns and operates numerous other domain names consisting of the FACEBOOK trademark in combination with various generic and country code top-level domain extensions, including <facebook.org> and <facebook.net>.
The Complainant further contends that the disputed domain name is connected to an inactive website, and such non-use is not a legitimate noncommercial or fair use under the Policy.
The Complainant further submits that there is no conceivable use of the subject domain name by the Respondent that could be legitimate, Respondent’s failure to make an active use of the disputed domain name therefore constitutes bad faith under Policy.
As stated above, the Respondent has not identified itself by name but rather relied upon “Registration Private, Domains By Proxy, LLC” and furthermore the Registrar identified the Respondent as Dornod Songuuli, with a supposed physical address in Mongolia.
The Respondent did not reply to the Complainant’s contentions. By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion & Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy. Such default does not, per se, entitle a complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004‑0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010‑0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with a requirement of the Rules (Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009‑0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response, particularly in the light of the fact that the Center wrote to the Respondent, advising of procedural matters and time limits.
From this, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shop Intimates USA, Supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2011-0040; Knorr-Bremse AG. v. WhoisGuard Protected, WhoisGuard, Inc. / Mosco Binzu, WIPO Case No. D2019-0616).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000, Inc, Supra; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, Supra; Standard Innovation Corporation v. Shopintimates USA, Supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., Supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Domain Name is Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trademarks and the domain names which it owns in many countries.
The Complainant has cited previous URDP decisions which it contends confirm that the FACEBOOK trademark is world famous. Even so, as the Respondent was not party to any of these UDRP decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those UDRP decisions is not evidence in this matter or necessarily binding on the Panel.
On the basis of its evidence and contentions in this matter, however, this Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, for the purposes of this proceeding the Complainant has rights which fall within the provisions of Article 6bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 16.2 and 16.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412). For the purposes of the Policy, the Panel finds the Complainant has rights in the trademark FACEBOOK.
The fact that the word trademark FACEBOOK has been incorporated entirely into the disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered trademark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).
The fact that the terms “page” and “security” are added to the Complainant’s trademark do not prevent a finding of confusing similarity (Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488).
The use of the same gTLD “.com” merely adds to the similarity of the Complainant’s trademark and the disputed domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382; Facebook, Inc., Instagram, LLC v. John Obeye, WIPO Case No. D2017-2106).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of Paragraph 4(a)ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Co, Supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is evidenced by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trademark FACEBOOK and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the wide-reaching trademark rights enjoyed by the Complainant. (Guerlain S.A. v. Peikang,
WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon,
WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless,
WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu,
WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems,
WIPO Case No. D2004-0360; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd,
WIPO Case No. D2010-0551).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, Supra).
The Complainant, having made out a prima facie case, the burden of adducing evidence has shifted to the Respondent which, by reason of silence due to default, has not come forward with any counter ancillary evidence (Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069).
Even if the Respondent had no intellectual property right such as trademark or a domain name, there is no evidence that the Respondent had been commonly known by that disputed domain name or otherwise had rights in the disputed domain name whether by license or trademark registration effected without the knowledge of the Complainant (Abbott Laboratories v. Li Jian Fu, Li Jian Fu, WIPO Case No. D2016-0501).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration & Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial again, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”
It is clear the Respondent is using the disputed domain name intentionally to attempt to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent is personally the beneficiary or whether the revenue accrues elsewhere does not, in the view of the Panel, detract from the notion that any gain so sought to be derived need not be derived by a respondent himself in that it is sufficient if a third party stands to reap the profits of wrongful conduct (Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)iv) of the Policy, constitute bad faith registration and use. (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, Supra).
The selection of a disputed domain name that is the same as, or confusingly similar to, the Complainant’s trademark and the Complainant’s domain name, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213), particularly where it is so widely known globally. Moreover, such conduct by the Respondent implies that it intended to suggest to would be customers that it was in some way linked to or associated with the Complainant and thereby solicit business by creating that belief in the mind of consumers.
Moreover, the conduct of the Respondent by registering a passive holding of the disputed domain name would in the absence of any evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with any offering of goods or services and that it resolved to an inactive placeholder webpage with no substantial content demonstrates, in the view of the Panel, bad faith (Bloomberg Finance, L.P. v. Huang Wei, WIPO Case No. D2015-1378).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <facebookpagesecurity.com> be transferred to the Complainant.
Date: February 10, 2022