WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Narinderpaul Brar / Registration Private, Domains By Proxy, LLC
Case No. DSO2018-0001
1. The Parties
1.1 The Complainant is Facebook Inc. of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
1.2 The Respondent is Narinderpaul Brar of Abbotsford, British Columbia, Canada / Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
2.1 The disputed domain name <facebook.com.so> (the "Domain Name") is registered with 1API GmbH (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 5, 2018.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 13, 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.
3.5 As part of its Complaint, the Complainant made various submissions regarding English being the appropriate language of these proceedings given that the Registration Agreement appeared to Complainant to be in English and German. However, in its verification response the Registrar confirmed the language of the registration agreement for the Domain Name to be English. Accordingly, the Panel is content for these proceedings to continue in English pursuant to paragraph 11(a) of the Rules.
4. Factual Background
4.1 The Complainant operates the very well-known social media website under the name "Facebook" and from the domain name <facebook.com>. The website was founded in 2004 and was originally restricted to students at Harvard University, but had grown to 1 billion users by September 2012. It currently has 2.13 billion monthly active users, and is the third most visited website in the world, the fourth most visited site in Canada and the sixth most visited site in Somalia.
4.2 The Complainant owns various registered trade marks around the world that either comprise or incorporate the term "Facebook". They include:
(i) Canadian trade mark No. TMA732799, for the word mark FACEBOOK, registered on January 21, 2009 in classes 35, 38, 39, 41, and 45;
(ii) United States trade mark No. 3041791, for the standard character mark FACEBOOK, registered on January 10, 2006 first use in commerce in 2004 in class 38;
(iii) European Union trade mark No. 004535381, for the word mark FACEBOOK registered on June 22, 2011 in classes 35 and 38; and
(iv) International trade mark No. 1075094, for FACEBOOK in white stylised lower case text on a blue background registered on July 16, 2010 in classes 9, 35, 36, 38, 41, 42, and 45. The mark has proceeded to grant in a number of the designated countries.
4.3 At the time that the Complaint was filed the Domain Name was registered in the name of a proxy service. However, in response to a request from the Complainant's lawyers that service identified the underlying registrant as "Narinderpaul Barr". References hereinafter to the Respondent are to that underlying registrant.
4.4 The Respondent would appear to be an individual located in Canada.
4.5 The Domain Name was registered on January 15, 2015. Since then it appears to have been used to display a website holding page, which stated "website coming soon".
4.6 On January 25, 2018, the Complainant sent an infringement notice to the Respondent in connection with the Domain Name, asserting its rights in the trade mark FACEBOOK and requiring the Respondent to disable any associated website and let the domain registration expire.
4.7 There then followed a series of correspondence with the Respondent in which the Respondent claimed that the Complainant had no trade mark rights in Somalia, which would preclude the Complainant from recovering the Domain Name and seeking payment in respect of the Domain Name. Although no particular sum appears to have been sought, reference was made to costs incurred in the form of "yearly fees to legal consultation etc", and the Respondent claimed that it "could have easily transferred and sold this domain for tens of thousands long time ago" and that "Online domain appraisal services value this domain in the millions".
5. Parties' Contentions
5.1 In its Complaint the Complainant provides details as to the Complainant's business and marks. It describes the circumstances surrounding the registration of the Domain Name and how it has been used thereafter. It also describes the Complainant's representatives' correspondence with the Respondent.
5.2 The Complainant also provides details of searches that it has conducted and contends that it has discovered that the Respondent either owns or has owned domain names incorporating the trade marks of others, including <linkedin.com.so>, <linkedin.ind.in>, <linkedin.ws> and <mastercardperks.com>.
5.3 The Complainant contends that the Domain Name is identical to the Complainant's trade mark rights, the Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name has been registered and is being used in bad faith. In this respect the Complainant claims that the fact that it does not have registered trade mark rights in Somalia does not matter, citing paragraph 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0").
5.4 The Complainant further contends that none of the examples of rights or legitimate interests set out in the Policy apply. It also claims that the Respondent must have known of the Complainant at the time that the Domain Name was registered and that subsequent correspondence with the Respondent demonstrates that the Domain Name was registered for the purpose of subsequently selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs incurred at the time of registration. This is said to involve bad faith registration in accordance with paragraph 4(b)(i) of the Policy. The registration of other domain names incorporating the marks of third parties is also said to demonstrate a pattern of conduct falling within paragraph 4(b)(ii) of the Policy.
5.5 Further, the Complainant points to the Respondent's use of a privacy service in respect of the Domain Name, which is said to be an additional indication of bad faith use in this case.
5.6 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 To succeed in proceedings under the Policy the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 Under paragraph 5(f) of the Rules, where a respondent fails to file a response, save in exceptional circumstances, a panel shall decide the dispute based upon the complaint. Further, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
6.3 Accordingly, the Panel will consider whether each relevant aspect of the Policy is made out in this case. However, before it does so, it is appropriate to make a number of observations as to the applicability of the Policy in this case.
6.4 The "model complaint" made available by the Center contains a section (Section V) whereby a complainant is invited to set out the "Jurisdictional Basis for the Administrative Proceeding". The words suggested are as follows:
"This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name(s) that is/are the subject of this Complaint is/are registered, incorporates the Policy. [If relevant, indicate when the domain name(s) was/were registered and specify the provision of the registration agreement that makes the Policy applicable to the domain names(s).] A true and correct copy of the domain name dispute policy that applies to the domain name(s) in question is provided as Annex [Annex number] to this Complaint and can be found at [insert URL]."
6.5 These words (suitably amended) form part of the Complaint in this case.
6.6 The wording of Section V would suggest that it is for a complainant to affirm that the UDRP applies and more specifically that through the relevant registration agreement the respondent has contractually agreed to the terms of the UDRP. The purported justification for this part of the model complaint is said to be found within paragraphs 3(a) and 3(b)(xiv) of the Rules. However, neither of these provisions expressly provide for either a panel or a complainant to verify that a respondent has agreed to the application of the UDRP.
6.7 Further, it is important to remember that notwithstanding its adversarial nature, the UDRP is not a form of arbitration. It instead constitutes "administrative proceedings" whereby the various obligations of those involved are contractual. In this respect, there is not one all encompassing contract to which all have signed up. Instead, there exists a network of contracts between different entities setting out each entity's obligations. In the case of generic Top-Level Domain ("gTLD") names such as ".com", ".org" and ".net", these take the form of separate contracts between ICANN, the relevant registrar, the relevant registry, and the dispute resolution service provider. These include, for example, the Registrar Accreditation Agreement between the Registrar and ICANN that requires registrars to include a term in registration agreements that mandates the application of the UDRP. Similarly, where a panel is appointed by the Center, the panel will have signed a statement of acceptance, whereby he or she agrees with the Center:
"to serve as a Panelist under the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), currently in effect."
6.8 Given this, the Panel is sceptical, absent a provision to this effect in the UDRP, the Rules, or the Supplemental Rules, that verifying the respondent's contractual consent to the UDRP is necessary or that this forms part of the role or obligations of a panel. No doubt under the contractual arrangements in place the registrant ought to have agreed through the relevant registration agreement to the operation of the Policy. For example, paragraph 1 of the Policy expressly states this to be so. But it does not follow that it is for the panel appointed by the Center to verify this. A panel's job, in accordance with the signed statement of acceptance, is simply to apply the UDRP, the Rules and the Supplemental Rules, to the domain name that the dispute resolution service provider has put before it.
6.9 That is not to say that a lack of registrant consent may not be important. For example, were a registrant to lose a domain name under the UDRP in circumstances where he or she had not agreed to the application of the UDRP, perhaps he or she will have some form of claim against the registrar. Further, a Registrar may be in contractual breach of other relevant contractual terms (such as the terms of the Registrar Accreditation Agreement referred to above). But it does not follow from this that a panel should not in accordance with its obligations proceed to make a decision under the Polcy.
6.10 This is not a gTLD case. It is a country code Top-Level Domain ("ccTLD") case, involving the ".so" ccTLD, which is the country code for Somalia. Further, the Panel understands that the relevant registry is the "Somali Network Information Centre", which appears to allow domain names to be registered at both the second level in the form <[term].so> and at the third level in the forms <[term].com.so>, <[term].edu.so>, <[term].gov.so>, <[term].me.so>, <[term].net.so> and <[term].org.so>. The Domain Name is such a third level domain name and (as far as the Panel can tell) would appear to be the first domain name of this sort where proceedings have been commenced under the Policy.
6.11 As far as the Panel is aware, the basis for the application of the UDRP to ".so" domain names is similarly a network of contracts. The Panel is also not aware of there being a separate legislative foundation for the application of the UDRP to Somali domain names in Somali law (in contrast, for example, to the application of a modified UDRP style scheme under European law to ".eu" domains).
6.12 According to the relevant registry, a single registration policy applies to all ".so" domain names (see http://sonic.gov.so/policies/). That policy (which is currently available at https://nic.so/policies/dotso-domain-name-registration-policies_v1.1.pdf), incorporates the UDRP (see Article 4.1). This appears to apply to proceedings concerning a "Domain Name" defined as "a name at the second level within the .SO TLD" (see the definitions section of that policy). Therefore, on its face, third level domain names such as the Domain Name are not covered.
6.13 However, the relevant policy is expressed to be subject to the laws of the Federal Republic of Somalia (see Article 5.13), and the Panel is not equipped to determine how the registration policy would be interpreted under that law. Further, the Panel is not privy to the other relevant contracts in place, including any contract between the Registrar and the Registry.
6.14 The Panel also understands that the Registrar has in this case confirmed to the Center that the UDRP applies in this proceeding.
6.15 Also, the Panel has in this case signed a statement of acceptance, which is effectively in identical terms to that normally signed in many gTLDs cases. Given this and for the reasons already given above in the context of other more common domain names, the Panel considers it unnecessary to consider the issue of applicability of the Policy any further. The Panel will thus consider the dispute before it and proceed to issue a decision as to whether the terms of the UDRP are satisfied.
B. Identical or Confusingly Similar
6.16 The Domain Name takes the form of the Complainant's word mark in its entirety and in combination with the ".com.so" suffix. The Panel takes the view that the suffix means that the mark and the Domain Name are not formally identical (and for a further explanation of the reasons for this see Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398). However, in practical terms that is of no significance. There is no doubt that the Domain Name and the Complainant's registered trade marks are confusingly similar (as to which see paragraph section 1.11 of the WIPO Overview 3.0).
6.17 The Panel also agrees with the Complainant that the fact that the Complainant does not have registered rights in Somalia does not matter. Subject to a number of qualifications (which do not apply in this case) the Complainant merely needs to show that some form of registered trade mark rights exist somewhere in the world (see paragraph section 1.1.2 of the WIPO Overview 3.0). The fact that the Complainant has such rights in a large number of jurisdictions around the world is more than sufficient. The Panel would also observe that the Respondent would appear not to be operating from Somalia but from Canada, where the Complainant has registered rights in any event.
6.18 Given this, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.19 For the reasons that are set out in the context of the consideration of bad faith registration and use later on in this decision, the Panel has formed the clear view that the Domain Name was registered and thereafter has been held because of its associations with the Complainant's mark and with a view to subsequent sale of the Domain Name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs incurred at the time of registration. The registration and holding of a domain name for such a purpose provides no rights or legitimate interests in the Domain Name and in the view of the Panel is prima facie evidence that no rights or legitimate interests exist.
6.20 Given this, the Complainant has to the satisfaction of the Panel made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.21 The Panel has little hesitation in concluding that the Domain Name was both registered and held primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name.
6.22 In this respect the Panel accepts that the Complainant's FACEBOOK mark is well known around the world, that the Respondent knew of the Complainant's mark at the time that the Domain Name was registered and that it is difficult to conceive of a use of the Domain Name which would not be bad faith use within the meaning of the Policy. Indeed, if the Respondent's contentions in correspondence are to be believed, it actively checked whether the Complainant had a registered trade mark in Somalia before it registered the Domain Name.
6.23 Further, the content of the correspondence between the Complainant's representatives and the Respondent is particularly telling. In that correspondence it appears to contend that it had previously reached out to the Complainant in respect of the Domain Name. Further, the only sensible reading of that correspondence and the Respondent's claims that it could have sold the Domain Name to others for "tens of thousands" and that the Domain Name has a value of "millions", is that it was seeking to extract a substantial financial offer from the Complainant. In that same correspondence there is also an obvious threat from the Respondent as to what might happen if the Complainant does not acquire the Domain Name as follows:
"That said, if this domain got into the wrong hands, someone could do a lot with it. Especially with false or misleading links and advertisements that start with facebook.com.so".
6.24 Further, the suggestion in a subsequent email from the Respondent that the Domain Name "has a lot of sentimental value" to the Respondent is risible.
6.25 Further, were there any doubt about this (and the Panel does not accept that there is) this would be laid to rest by the fact that the Respondent has registered other domain names incorporating the trade marks of third parties both in the ".so" space and elsewhere.
6.26 It follows that the Complainant has easily demonstrated that the activities of the Respondent fall within the example of circumstances indicating bad faith set out in paragraph 4(b)(i) of the Policy. The Respondent's activities also appear to constitute part of a pattern of conduct falling within the scope of paragraph 4(b)(ii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <facebook.com.so> be transferred to the Complainant.
Matthew S. Harris
Date: September 3, 2018