WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Domain Admin, Whois Privacy Corp.

Case No. D2016-1832

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 Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <facebuk.com> and <facebukcom.com> are registered with Internet Domain Service BS Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 12, 2016, 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.

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 Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. On September 22, 2016, the Center re-notified the Respondent of the Complaint to correct an administrative oversight. The due date for Response was extended to October 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2016.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on October 19, 2016. 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 the world’s leading provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. Since its launch, the Complainant rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010 and 1 billion users worldwide by September 2012.

Today, the Complainant has more than 1.71 billion monthly active users, and 1.13 billion daily active users on average worldwide. Its main website is currently ranked as the third most visited website in the world, according to information company Alexa.

The Complainant’s social networking services have approximately 84.5 percent of its daily active users in the United States and Canada, and are provided in more than 70 languages. The Complainant is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market, with 1.57 billion mobile monthly active users, and 1.03 million mobile daily active users.

In 2015, the FACEBOOK brand ranked 23 (from 29 in 2014, and 52 in 2013) in Interbrand’s Best Global Brands report, and was selected “top riser” for a second year in a row. The Complainant reported revenues reaching USD 12.5 billion, and an increase of 58 percent year-over-year.

The Complainant is the owner of numerous domain names consisting of, or including, the term “Facebook”, such as, by way of example, <facebook.com>, <facebook.net>, <facebook.org>, <facebook.biz>, <facebook.eu>, <facebook.be>, <facebook.it>, <facebook.co>, etc.

The Complainant has also made substantial investments to develop a strong presence online, by being active on different social media forums. The Complainant has its official page on Facebook, with over 172 million “likes”, and is present on Twitter (with over 14 million followers), on YouTube and on Linkedin.

The trademark FACEBOOK is exclusively associated with the Complainant. All search results obtained by typing the term “Facebook” in Google’s search engine refer to the Complainant.

The Complainant is the owner of numerous FACEBOOK trademark registrations in many jurisdictions around the world. Among these trademarks, the Complaint provided details of the following trademark registrations:

- FACEBOOK, United States trademark No. 3041791, registered on January 10, 2006 (first use in commerce in 2004);

- FACEBOOK, United States trademark No. 3122052, registered on July 25, 2006 (first use in commerce in 2004);

- FACEBOOK, European Union trade mark No. 4535381, registered on June 22, 2011; and

- FACEBOOK, International trademark No. 1075094, registered on July 16, 2010.

The disputed domain name <facebuk.com> was registered on October 31, 2011, and the disputed domain name <facebukcom.com> was registered on December 1, 2011. The disputed domain names are registered with a privacy protection service and it is possible that a third party is in fact behind the registration of the disputed domain names.

The disputed domain name <facebuk.com> is redirecting to a parking page available at “www.facebukcom.com” displaying sponsored links targeting the Complainant’s FACEBOOK trademark, such as “Facebook Login”, “Facebook Home”, “A Social Network”, etc. The disputed domain name <facebukcom.com> is also pointing to this website.

5. Parties’ Contentions

A. Complainant

The Complainant’s assertions may be summarized as follows.

The disputed domain names are identical or confusingly similar to the Complainant’s trademarks

The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s FACEBOOK trademarks listed under section 4 above, since they consist of a deliberate misspelling of the Complainant’s well-known trademark, as the “oo” has been replaced by the vowel “u”. The Complainant submits that whilst the element “facebuk” and the Complainant’s FACEBOOK trademark are differently spelt, they are phonetically (and visually) identical or similar.

Furthermore, the addition of the element “com” to the disputed domain name <facebukcom.com> does not diminish the confusing similarity with the Complainant’s trademark. Further, it is generally accepted that the suffix “.com”, is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark, as it is a functional element.

The Respondent has no rights or legitimate interests in respect of the disputed domain names

The Complainant submits that to demonstrate that the second condition under paragraph 4(a)(ii) of the Policy is met, it is sufficient for the Complainant to establish a prima facie case, showing that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has established a prima facie case, the burden of production shifts to the Respondent to demonstrate that it owns rights or legitimate interests in the disputed domain names.

The Complainant further asserts that in the instant case the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, to demonstrate rights or legitimate interests in the disputed domain names.

The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed to make any use of the FACEBOOK trademark, in a domain name or otherwise.

Furthermore, according to the Complainant, the Respondent cannot assert that prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are pointing to a parking page containing sponsored links targeting the Complainant’s trademarks. Such use of the disputed domain names cannot possibly be considered a bona fide offering of goods or services, as the Respondent is clearly seeking to unduly profit from the Complainant’s goodwill for its own financial gain.

According to the Complainant, the Respondent cannot conceivably claim that it is commonly known by the disputed domain names, given the notoriety surrounding the FACEBOOK trademark and its exclusive association with the Complainant. In addition, it seems unlikely that the Respondent has secured or even sought to secure trademark rights in the term “Facebook”.

The Complainant further affirms that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to paragraph 4(c)(iii) of the Policy. As previously mentioned, the disputed domain names are pointing to a parking page that is clearly commercial in nature, as evidenced by the presence of numerous sponsored links from which the Respondent (or a third party), is undoubtedly obtaining financial gain. Such use of the disputed domain names cannot be considered either legitimate noncommercial or fair, as the Respondent is clearly seeking to unfairly exploit the goodwill of the Complainant’s trademarks for its own profit.

Finally, given the renown and explosive popularity of the FACEBOOK trademark worldwide, it is not possible to conceive any plausible actual or contemplated active use of the disputed domain names by the Respondent, that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

The disputed domain names were registered and are being used in bad faith

(i) Registration in bad faith

The Complainant maintains that the FACEBOOK trademark is highly distinctive and famous throughout the world, and has been continuously and extensively used since 2004.

Given the renown and goodwill of the FACEBOOK trademark worldwide, it is inconceivable for the Respondent to argue that it did not have knowledge of this trademark at the time of the registration of the disputed domain names in 2011. Moreover, the fact that the Respondent appears to be engaging in a pattern of registering domain names confusingly similar to the Complainant’s trademark is a further indication of the Respondent’s awareness of the Complainant’s rights at the time of the registration.

The Complainant therefore submits that the Respondent registered the disputed domain names in full awareness of the Complainant’s rights, to capitalize on the Complainant’s goodwill and reputation to increase the number of visitors to its website and, consequently, its revenues through the “pay-per-click” links appearing on this website.

Hence, the Complainant concludes that the disputed domain names were registered in bad faith.

(ii) Use in bad faith

The Complainant submits that the Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

The Respondent is using the disputed domain names seeking to attract Internet users searching for the Complainant’s trademark, and divert them to the Respondent’s website. The main purpose of the Respondent in registering the disputed domain names is, in the Complainant’s view, that of causing confusion amongst Internet users as to the source or sponsorship of the Respondent’s website.

The Respondent is deliberately seeking to profit from the Complainant’s goodwill and renown, for its own financial gain. The disputed domain names resolve to a parking page displaying commercial links from which the Respondent is undoubtedly obtaining financial gain by means of “pay-per-click” or some other type of revenue generating scheme. This kind of use is clearly in bad faith.

The Complainant further asserts that the Respondent is responsible for the contents of the website associated with the disputed domain names, regardless of whether the sponsored links are automatically generated or not. Furthermore, under the Policy it is not necessary for the Respondent itself to have profited directly from those commercial links in order to establish bad faith use. It would be sufficient for the third party behind the sponsored links, or another third party, to have made some profit from such arrangements.

In the Complainant’s view, given the overwhelming renown and explosive popularity of the Complainant’s FACEBOOK trademark worldwide, and the nature of the disputed domain names, there simply cannot be any actual or contemplated good faith use of the disputed domain names as said use would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

The last argument of the Complainant to support the fact that the Respondent registered the disputed domain names in bad faith, is the fact that the Respondent has chosen to conceal its identity by means of a privacy protection service. In the Complainant’s view there is simply no reason that could explain why the Respondent would need to protect its identity by means of a privacy shield for a parking page.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s FACEBOOK trademarks, for the following reasons.

The “facebuk” element of the disputed domain names is visually very similar to the trademark FACEBOOK. The first five letters are identical, likewise the last one. The only difference lies on the penultimate letter “u” of the element “facebuk”, which substitutes the letters “oo” of the trademark FACEBOOK. The Respondent is deliberately misspelling the Complainant’s trademark as the differences between the disputed domain names and the Complainant’s trademark are not sufficient to alter the confusing similarity between them. This is even more so, considering that from a phonetic point of view, the “facebuk” element is presumably pronounced identically to the Complainant’s trademark: in many languages the sound of the single letter “u” is identical to the sound of the double letter “oo” of the trademark FACEBOOK.

The addition of the suffix “com” to the disputed domain name <facebukcom.com> does not diminish the confusing similarity with the Complainant’s trademark, as it lacks distinctive character and is much shorter than the dominant and distinctive element of the disputed domain name <facebukcom.com>, which lies in the element “facebuk”. This is so even if the “com” element is part of the second level gTLD, and is not, in the instant case, the technical requirement of the top level gTLD.

Therefore, the Panel is satisfied that the first condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Complainant pointed out that the Respondent is not a licensee of the Complainant and that it has not been authorized to make any use of its FACEBOOK trademark in a domain name or elsewhere. It is also obvious that the Respondent was not authorized to misspell the Complainant’s trademark as it did in the disputed domain names.

There is no available information about the fact that the Respondent is known by the disputed domain names, and given the strong confusing similarity of the element “facebuk” in the disputed domain name with the Complainant’s FACEBOOK trademark, it is extremely unlikely that the Respondent has secured any trademark rights on this term.

The Respondent has not made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, nor has made or is currently making a legitimate noncommercial or fair use the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The disputed domain names point to parking page containing sponsored links from which the Respondent is probably obtaining financial gain. Therefore, the Respondent is seeking to unduly profit from the Complainant’s goodwill. The unauthorized use of a well-known trademark as a domain name to lead to a parking page containing “pay-per-click” links does not amount to a bona fide offering of goods and services, nor does it constitute a legitimate noncommercial or fair use, pursuant to paragraph 4(c)(iii) of the Policy (see Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598).

Lastly, given the widespread reputation of the Complainant’s trademark, the Panel does not consider that the Respondent could actively use the disputed domain names in a legitimate way. Any use of the disputed domain names would likely result in misleading diversion and taking unfair advantage of the Complainant’s rights.

It is a well-established principle that once the Complainant has made a prima facie case of the Respondent’s lack of rights or legitimate interests in a domain name, the burden of production shifts to the Respondent (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). In the instant case, the Panel finds that the Respondent provided sufficient arguments and evidence to at least establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent did not file any Response and therefore failed to at least make an attempt to rebut the Complainant’s arguments attesting to its lack of rights or legitimate interests in the disputed domain names.

In light of the foregoing, the Panel concludes that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and used the disputed domain names in bad faith, for the following reasons.

With respect to registration in bad faith, the Panel notes that the FACEBOOK trademark enjoys high reputation worldwide and the Panel does not consider that the Respondent registered confusingly similar domain names without being aware of the existence of the Complainant’s trademark. As the disputed domain names are used to commercially profit from the significant goodwill and reputation of the Complainant’s trademark without due authorization, the Panel concludes that the disputed domain names were registered in bad faith.

As far as use in bad faith is concerned, the Panel finds that the Respondent is deliberately using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.

As a matter of fact, the Respondent is currently using the disputed domain names to resolve to a parking page displaying commercial links. In the absence of any contrary evidence from the Respondent, the Panel takes the view that the Respondent is deriving commercial gain from these “pay-per-click” links. Accordingly, the Respondent is deliberated seeking to profit from the Complainant’s goodwill and renown, for its own financial gain. This kind of behavior is to be considered in bad faith (see also Ustream.TV, Inc. v. Vertical Axis, Inc., supra).

Finally, the Panel agrees that given the widespread reputation of the FACEBOOK trademark, there cannot be any actual or contemplated good faith use of the disputed domain names, as any kind of use would result in misleading diversion and taking unfair advantage of the Complainant’s rights (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

For all the aforementioned reasons, the Panel concludes that also the third condition under paragraph 4(a)(iii) of the Policy is met.

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 names <facebuk.com> and <facebukcom.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: October 31, 2016