WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Otumba David
Case No. DCO2018-0002
1. The Parties
Complainant is Facebook, Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Otumba David of Alaska, United States.
2. The Domain Name and Registrar
The disputed domain name <f-bk.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.
The Center verified that the 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 January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on February 16, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 2, 2018. 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
With over a billion active users worldwide using its services, Complainant is a world renowned provider of online social networking services. Founded in 2004, Complainant offers its services through its website “www.facebook.com”. Its website is the third most visited website in the United States and in the world. Complainant is also known by the abbreviation FB and is the owner of numerous domain names reflecting this abbreviation, including <fb.com>, <fb.asia>, and <fb.uk>. In addition to owning the trademark registration for FACEBOOK (e.g., United States Trademark No. 3041791; registered January 10, 2006), Complainant is also the registered trademark owner of FB in many parts of the world, including in the United States (No. 4659777; registered December 23, 2014) and in the European Union (No. 008981383; registered August 23, 2011).
Respondent registered the disputed domain name <f-bk.co> on October 24, 2017. The domain name does not resolve to an active website. However, at least one of Complainant’s customers has received several emails purporting to be from “Facebook Finance” and seeking a fund transfer of over 2 million USD for overdue invoices from an email address (“. . . @f-bk.co”) linked to the disputed domain name. Included in one of the emails was an “official” letter, including a false FACEBOOK letterhead and Complainant’s “new” banking details for the money transfer.
5. Parties’ Contentions
According to Complainant, the disputed domain name is confusingly similar to its FB trademark because the disputed domain name incorporates the mark in its entirety and that the addition of the hyphen and the letter “k” is insufficient to distinguish the domain name from Complainant’s trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because he is not authorized user of Complainant’s mark and cannot make a showing of his rights or legitimate interest because, considering Complainant’s renown, it is not conceivable that Respondent is commonly known by the FB mark and because Respondent is using the disputed domain name to defraud Complainant’s clients – the anti-thesis of a legitimate or non-commercial fair use.
Complainant maintains that Respondent registered and is using the disputed domain name in bad faith because it is inconceivable that Respondent was unaware of Complainant’s mark and its rights in the mark at the time he registered the disputed domain name and that Respondent registered and is using the disputed domain name for the purpose of perpetrating a fraud on Complainants’ clients by sending emails from an address that appears to originate from Complainant and misrepresenting himself as Complainant’s employee.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademarks FB and FACEBOOK. Although <f-bk.co> is not identical to Complainant's registered marks, "[i]n some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15. See, e.g., Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (<bmdecoder.com> and <bmwdecoder.com>, transferred; <bmdecoder.com> held confusingly similar to BMW). “Moreover, whereas in the case of [<bmdecoder.com>] the [BMW] mark is not present in its entirety, the content at the corresponding website serves to affirm a finding of confusing similarity.” Here, Complainant’s FB trademark is recognizable within the disputed domain name, and the content of Respondent’s emails confirms that he intended to fraudulently target Complainant’s trademarks.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1.
Accordingly, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that bad faith registration and use. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” WIPO Overview 3.0. See, e.g., Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471 (phishing); Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285 (“The essence of fraud is that the Respondent has used the Domain Name to pose as senior executive of the Complainant and to send false emails on behalf of that executive making the emails look like genuine emails coming from that executive. These false emails have then been used to reroute payments for the Complainant's goods to bank accounts in China, so they are received by the Respondent.”).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the transfer of the disputed domain name <f-bk.co> to Complainant.
Lawrence K. Nodine
Date: March 5, 2018