WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Isim Tescil Anic, Wee Capital Ltd. / Koray Anic
Case No. DVG2017-0001
1. The Parties
The Complainant is Facebook, Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Isim Tescil Anic, Wee Capital Ltd. of Sofia, Bulgaria / Koray Anic of Ankara, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <facebook.vg> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2017. On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2017, 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 October 30, 2017 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 October 31, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated October 20, 2017 stating that Turkish is the language of the registration agreement of the disputed domain name, on October 30, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On October 30, 2017, the Complainant submitted its request for English to be the language of the proceeding. On November 4, 2017, the Respondent submitted its request for Turkish to be the language of the proceeding.
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 in English and Turkish of the Complaint, and the proceedings commenced on November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. The Respondent did not submit any response. Accordingly, the Center informed the Parties that it would proceed to appointment of the administrative panel.
The Center appointed Uğur G. Yalçıner as the sole panelist in this matter on December 5, 2017. 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 was founded in 2004, and today provides social network services in more than 70 languages with more than 2 billion active users.
The Complainant had approximately 2 million Facebook users in Bulgaria in 2015, 2.15 million in 2016, and has 3.4 million as of June 2017.
The Complainant is the owner of the below FACEBOOK trademarks among others:
- United States trademark No. 3041791, registered on January 10, 2006;
- European Union trade mark No. 005585518, registered on May 25, 2011; and
- International trademark No. 1232015, registered on December 15, 2014 (designating the European Union).
The Complainant owns many other trademark registrations for FACEBOOK in various jurisdictions throughout the world.
The Complainant also owns and operates a large number of domain names such as <facebook.com>, <facebook.org> and <facebook.net> as well as under countrycode extensions such as <facebook.com.tr> (Turkey), <facebook.bg> (Bulgaria), <facebook.eu> (European Union).
The disputed domain name was registered on December 31, 2016. The Complainant submitted evidence that the disputed domain name was parked for sale and the parking page included the Respondent’s contact details. Currently, the disputed domain name does not resolve to any active website.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name and contends as follows:
The domain name <facebook.vg> is identical to a trademark in which the Complainant has rights.
The Domain Name incorporates the Complainant’s trademark in its entirety.
The Complainant further submits that the addition of the country-code Top-Level Domain (“ccTLD”) “.vg” does not diminish the confusing similarity with the Complainant’s trademark as it is generally accepted that a suffix, such as “.vg”, is a functional element.
The Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not connected with the Complainant. The Complainant has never granted a permission or license to the Respondent to use its trademark. On the contrary, the disputed domain name, was redirecting to a webpage advising that it is for sale so that the Respondent has never used and does not intend to use the FACEBOOK trademark in connection with a bona fide offering of goods and services.
The Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Complainant argued that its FACEBOOK trademark is highly distinctive and famous throughout the world, having rapidly acquired considerable goodwill and renown worldwide, and has been continuously and extensively used since 2004. The Complainant additionally argued that given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s trademark at the time of registration of the disputed domain name in 2016, particularly as the Complainant’s trademark rights predate the registration date of the disputed domain name by many years and moreover.
The offer for sale of the disputed domain name, both sent by email to the Complainant and also available on the website to which the disputed domain name resolved, reinforces this blatant bad faith. The fact that the Respondent registered the disputed domain name to sell it to the Complainant for valuable consideration.
The Complainant has submitted previous UDRP decisions related to its claim that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Although the language of the Registration Agreement for the disputed domain name is Turkish, the Complainant argues that the language of the administrative proceeding should be English for the following reasons:
- The disputed domain name has been registered under the ccTLD “.vg” for the British Virgin Islands Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
- The disputed domain name identically reproduces the Complainant’s FACEBOOK trademark, which is a highly distinctive term in English.
- The content of the website to which the disputed domain name is pointing is in English and therefore the Respondent is targeting English speakers; thus the Respondent is likely to have a good understanding of the English language.
- The Respondent appears to be an individual based in Bulgaria and is thus presumably not a native English speaker. However, the Respondent’s response to the Complainant’s lawyer, via a related party, was in English.
- Translating the Complaint into Turkish would incur considerable expenses to the Complainant and this would also cause delays in the proceeding.
On November 4, 2017, the Respondent submitted its request for Turkish to be the language of the proceedings, and all other communications between the Parties.
It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Since the Respondent did not submit any Response, translating the Complaint into Turkish will lead to undue and unnecessary burden and delay in the resolution of the dispute. Under these circumstances, noting that the Respondent was notified of the present proceeding in both English and Turkish, and the Respondent’s subsequent failure to file any substantive response to the Complaint, the Panel determines English to be the language of this proceeding.
6.2. Substantive Issues
Pursuant to paragraph 14 of the Rules, in case of failure of a Party to comply with any of the time periods established by the Rules, the Panel shall proceed to a decision based on the Complaint. Since the Respondent failed to submit a Response the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the owner of the trademark FACEBOOK as evidenced in the annexes to the Complaint.
The disputed domain name entirely incorporates the Complainant’s trademark. It is an accepted principle that the ccTLD, in this case “.vg”, is to be typically disregarded in the consideration of the issue of whether a domain name is identical or confusingly similar to a complainant’s trademark.
As a conclusion, the Panel concludes that the paragraph 4(a)(i) of the Policy has therefore been satisfied, and the disputed domain name is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel finds that the Respondent does not appear to be commonly known by the disputed domain name and also the Respondent has no rights or legitimate interests in the disputed domain name, it is also obvious that the Complainant has not authorized the Respondent to use or register the disputed domain name.
Further, after the Complainant contacted the Respondent, the Respondent refused to transfer the disputed domain name at no cost and offered to sell the disputed domain name. The disputed domain name is not otherwise being used by the Respondent. The Panel finds that this activity cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the Complainant has proven the Respondent’s absence of rights or legitimate interests in the disputed domain name in the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.”
In accordance with previous decisions issued under the Policy, the Panel is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
The Panel also visited the Archive.org database and was able to verify that the disputed domain name has not been subject to any use and on the contrary it has been to resolve to a web page offering the disputed domain name for sale together with the contact details of the Respondent. The Panel agrees with the findings in similar cases where panels have held that “The language at such site – ‘This domain is for sale’ – clearly suggests that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses” (Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642)
The Panel finds that these circumstances indicate that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant.
The Panel further confirms that the Respondent is also the registrant of many domain names, including well-known third-party trademarks, therefore this also indicates that Respondent is in the business of purchasing and reselling domain names. See Primedia Specialty Group Inc. v. This Domain is For Sale, Alan Lam, WIPO Case No. D2007-0789.
Accordingly, the Panel finds in favor of the Complainant on paragraph 4(a)(iii) of the Policy, concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <facebook.vg> be transferred to the Complainant.
Uğur G. Yalçıner
Date: December 18, 2017