WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Giap Nguyen Van and Giao Tran Ngoc
Case No. D2018-2762
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 Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Giap Nguyen Van of Ha Dong, New York, United States and Giao Tran Ngoc of Binh Luc, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <fbcandy.co>, <fbcandy.com>, <fbsendy.com>, and <fbtarget.co> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On November 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 3, 2018, and on December 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent are listed as the registrants and providing the 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 the Respondents of the Complaint, and the proceedings commenced on December 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 2, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on January 9, 2019. 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, founded in 2004, is one of the most famous businesses on the planet, with over one billion daily users worldwide.
The Complainant is commonly referred to by the acronym “fb” and it owns many “fb” domain names including <fb.com>.
The Complainant owns a number of registered trade marks for FB worldwide including United States trade mark No. 4782235, filed on March 6, 2012, registered on July 28, 2015, in class 38.
The disputed domain names were registered on the following dates:
<fbcandy.com>: September 28, 2017
<fbtarget.co>: October 20, 2017
<fbsendy.com>: January 26, 2018
<fbcandy.co>: July 8, 2018
As of February 19, 2018, the disputed domain name <fbsendy.com> was used for a website which appeared to offer scraping services relating to Facebook email addresses and other user data.
As of October 31, 2018, the disputed domain name <fbcandy.com> was used for a website offering a similar service. The site was headed: “WORLD’S FIRST ALL-IN-ONE FACEBOOK TOOL – COMPLETE MANAGEMENT, MASS AUTOMATION, MASS EXTRACTION ENGAGEMENT SUITE”.
The disputed domain names <fbtarget.co> and <fbcandy.co> are inactive.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant has developed considerable reputation and goodwill worldwide in its services and brands including its FB mark.
The disputed domain names, which incorporate the Complainant’s trade mark in its entirety, are confusingly similar to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has not authorised the Complainant to use its trade mark.
The disputed domain names have not been used for a bona fide offering of goods or services. The disputed domain names <fbtarget.co> and <fbcandy.co> have never been actively used. The disputed domain names <fbcandy.com> and <fbsendy.com> have been used in an illicit manner.
The Respondent cannot conceivably claim to be known by the disputed domain names. The registrant names are entirely different.
Nor can the Respondent claim that it has made legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith.
The Respondent could not plausibly argue that it has no knowledge of the Complainant, given its fame. Indeed, the Respondent’s actual use of the disputed domain names <fbcandy.com> and <fbsendy.com> evidences actual knowledge of the Complainant.
The Complainant’s use of the disputed domain names <fbcandy.com> and <fbsendy.com> to offer subscriptions to data scraping services of the profiles of the Complainant’s users creates a likelihood of confusion with the Complainant in the context of activities which breach the Complainant’s terms and conditions, and which could also give rise to phishing or other illicit behaviour which puts the Complainant’s users’ privacy at risk.
The disputed domain names <fbtarget.co> and <fbcandy.co> constitute passive holding in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Matter: Consolidation of Respondents
The principles governing the question of whether a complaint may be brought against multiple respondents are set out in paragraph 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Here, the Complainant has established substantial commonalities between all four disputed domain names, including within the registrant contact information and domain name server details shown in the WhoIs listings as well the in format of the disputed domain names themselves (“fb” plus single descriptive term). Furthermore, no party has appeared in this proceeding to oppose consolidation.
The Panel is therefore satisfied that the disputed domain names are subject to common control and that, in the circumstances, consolidation of the named Respondents into this proceeding is fair and equitable to all parties.
6.2 Substantive Matters
A. Identical or Confusingly Similar
The Complainant has established rights in the mark FB by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use that name.
Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within each of the disputed domain names and, accordingly, the addition of the various descriptive terms is does not avert a finding of confusing similarity.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in a disputed domain name.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain names for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
There is no evidence that the disputed domain names <fbtarget.co> and <fbcandy.co> have ever been actively used at all.
The disputed domain names <fbcandy.com> and <fbsendy.com> have been used but for a service involving the scraping of personal data of the Complainant’s users which is very likely to involve breach of data protection laws and which breaches the Complainant’s terms and conditions. In any event, such activities cannot be said to constitute a bona fide offering of services.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is obvious that the Respondent registered the disputed domain names with the Complainant’s distinctive and well-known trade mark in mind, not least given the Respondent’s use of two of the disputed domain names, <fbcandy.com> and <fbsendy.com>, for services directly referable to the Complainant. Furthermore, for reasons explained in section 6(b) above, the Panel is satisfied that the user data scraping services offered at the disputed domain names, <fbcandy.com> and <fbsendy.com> are clear indicia of use in bad faith.
As to the disputed domain names <fbtarget.co> and <fbcandy.co>, section 3.3 of WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use […] and (iv) the implausibility of any good faith use to which the domain name may be put. In the Panel’s view, all of these factors apply in this case, reinforced by the fact that the Respondent owns two other disputed domain names, <fbcandy.com> and <fbsendy.com>, which themselves have been used in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 names, <fbcandy.co>, <fbcandy.com>, <fbsendy.com>, and <fbtarget.co> be transferred to the Complainant.
Date: January 22, 2019