WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Meta Platforms, Inc. v. Thomas Novak
Case No. DIO2021-0026
1. The Parties
The Complainant is Meta Platforms, Inc., United States of America (“United States” or “U.S.”), represented Hogan Lovells (Paris) LLP, France.
The Respondent is Thomas Novak, United States.
2. The Domain Name and Registrar
The disputed domain name <librafbook.io> is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 the Complainant on November 17, 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 November 19, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2022.
The Center appointed William R. Towns as the sole panelist in this matter on January 10, 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 Complainant is Meta Platforms, Inc. (formerly “Facebook”), a social technology company based in Menlo Park, California, United States, and a well-known provider of networking services. The Complainant is the parent organization of Facebook, Instagram, and WhatsApp, among other subsidiaries, including Diem, and offers products and services including Facebook, Messenger, Facebook Watch, and Facebook Portal.
The Complainant in June 2019 announced the planned development of a new cryptocurrency designated as “Libra”. The Respondent thereafter registered the disputed domain name <librafbook.io> on or about November 8, 2020. “Libra” then subsequently was rebranded by the Complainant as “Diem” in December 2020. The Complainant’s Diem payment network remains under development by the Diem Association, previously the Libra Association.
The Complainant is the owner of trademark registrations for its FACEBOOK and FB marks issued in the U.S., European Union, and in other jurisdictions, including the following:
FACEBOOK – U.S. Reg. No. 3041791, applied for February 24, 2005, and registered January 10, 2006;
FACEBOOK − European Union Trade Mark (EUTM) Reg. No. 005585518, applied for December 12, 2006, and registered May 25, 2011;
FACEBOOK− International Reg. No. 1075094, registered July 16, 2010 (designating multiple jurisdictions);
FB – European Union Trade Mark (EUTM) Reg. No. 008981383, applied for March 25, 2010, and registered August 23, 2011; and
FB – U.S. Reg. No. 4659777, applied for July 14, 2008, and registered December 23, 2014.
The Complainant has experienced substantial growth since it began offering online networking services under the FACEBOOK mark, growing from 1 million active users by the end of 2004 to 2.27 billion users as of September 2018, and on average 1.91 billion daily average users as of June 2021. The Complainant’s website “www.facebook.com” is consistently ranked among most visited websites in the world, and UDRP panels have recognized the Complainant’s FACEBOOK mark as one of the most famous online marks in the world. See Facebook, Inc. v. Franz Bauer, WIPO Case No. D2010-1247; Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004; and Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan, WIPO Case No. D2015-0614. The Complainant has registered numerous domain names as well reflecting its FACEBOOK Marks.
UDRP panels also have acknowledged the considerable reputation of the Complainant’s FB mark. See, e.g., Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145. The Complainant’s FB trademark is also an abbreviated version of the of its FACEBOOK mark, and has been recognized as such by UDRP panels. See, e.g., Facebook, Inc. v. Kim Changho, WIPO Case No. D2019-1432.
The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s FB and FACEBOOK marks, in which the Complainant holds registrations in countries around the world. The Complainant explains that the disputed domain name comprises the Complainant’s FB mark, which is preceded by the element “libra”, and followed by the letters “ook”, and emphasizing that prior UDRP panels have held “fbook” to be confusingly similar to the Complainant’s FB and FACEBOOK marks. The Complainant calls attention to Facebook, Inc. v. Kim Changho, WIPO Case No. D2019-1432 (<fbook.org>); and Facebook, Inc., WhatsApp Inc., Instagram, LLC, Oculus VR, LLC v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150.
The Complainant asserts that the disputed domain name appropriates the FB mark in its entirety and is a deliberate misspelling of the Complainant’s FACEBOOK mark. The Complainant submits that the addition of “libra” in the disputed domain name does not prevent a finding of confusing similarity with respect to the Complainant’s FB and FACEBOOK marks, which are recognizable in the disputed domain name. The Complainant adds that the country code Top-Level Domain (“ccTLD”) “.io” is disregarded for purposes of assessment under the first element of the Policy.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant represents that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, is not a licensee of the Complainant or affiliated with the Complainant, and has not been authorized by the Respondent to use the Complainant’s FB and FACEBOOK marks.
The Complainant further contends that the Respondent has not been commonly known by the disputed domain name, stating that the Respondent bears no resemblance to the disputed domain name and does not hold trademark registrations for “librafbook” or any variation thereof. The Complainant asserts that the disputed domain name has not been used with an active website, nor used in the promotion of any business giving rise to reputation with respect to the disputed domain name.
The Complainant maintains that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant observes that the Respondent appears to be passively holding the disputed domain name, and submits that any such passive holding by the Respondent does not constitute a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant asserts that the disputed domain name was registered in bad faith or is being used in bad faith by the Respondent. The Complainant emphasizes that its FACEBOOK marks have been used in connection with the Complainant’s social network since as early as 2004, and adds the FB mark was registered in the European Union in 2011, rapidly acquiring thereafter considerable goodwill renown worldwide.
The Complainant submits that the Respondent could not credibly assert it lacked prior knowledge of the Complainant’s mark when registering the disputed domain name in the year 2020, at which time the Complainant’s social network already had amassed well over 2 billion users. The Complainant maintains that the Respondent’s targeting of the Complainant through the use of the disputed domain name may be inferred from the nature of the disputed domain name itself, referring to “libra”, and also concludes that the Respondent used the disputed domain name to create a misleading association with the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
As will be appreciated, these requirements are very similar to the requirements under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) save that, in particular, it is necessary for the Complainant to establish only that the disputed domain name was registered in bad faith or is being used in bad faith.
In view of the close similarity of the requirements of the Policy and the UDRP, therefore, the Panel will draw on the principles established under the UDRP as appropriate.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration or use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <librafbook.io> is confusingly similar to the Complainant’s FACEBOOK and FB marks, in which the Complainant has established rights through registrations and continuous and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. See Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.0, section 1.7. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.1
Applying this comparison, the Complainant’s FACEBOOK and FB marks are recognizable in the disputed domain name.2 The disputed domain name consists of either an obvious misspelling of the Complainant’s FACEBOOK mark or an abbreviated version of said mark, either way the FACEBOOK mark is recognizable.3 See, e.g., Facebook, Inc. v. Kim Changho, supra. The Complainant’s FB mark also is recognizable within the disputed domain name. When as here the relevant trademarks are recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the Complainant’s marks for purposes of UDRP standing.4 See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524. CcTLD’s such as “.io” generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s FACEBOOK marks.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed 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, even if it 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 consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and holding of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The record is convincing that the Respondent was aware of the Complainant and had the Complainant’s FACEBOOK and FB Marks firmly in mind when registering the disputed domain name.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication in the record that the Respondent ever has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration or use set forth in paragraph 4)b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of the Policy. It is clear beyond cavil that the Respondent had the Complainant’s FACEBOOK and FB marks firmly in mind when registering the disputed domain name. The Respondent’s registration of the disputed domain name as reflected in the record of this case is clearly demonstrative of bad faith. In addition, the fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <librafbook.io> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 23, 2022
1 WIPO Overview 3.0, section 1.7.
2 See WIPO Overview 3.0, section 1.7.
3 See WIPO Overview 3.0, section 1.9 and cases cited therein. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark. See also WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.7 and cases cited therein.
5 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.