WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. PrivacyGuardian.org / Alberto Macias

Case No. D2018-0244

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 PrivacyGuardian.org of Phoenix, Arizona, United States / Alberto Macias of Madrid, Spain.

2. The Domain Names and Registrar

The disputed domain names <facebooksupport.com>, <facebookusers.com>, and <facebookworld.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2018. On February 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <facebooksupport.com>. On February 5, 2018, 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 February 8, 2018, 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 February 12, 2018. On February 12, 2018, the Center received an email communication from the Respondent expressing a willingness to transfer the disputed domain names, to which the Center sent an email to the Parties on February 12, 2018, inviting the Complainant to suspend the proceeding to enable the Parties to discuss settlement. The Respondent sent informal email communications on February 14, 2018 and February 16, 2018. On February 16, 2018, the Complainant sent an email communication submitting a second amended Complaint adding the disputed domain names <facebookusers.com> and <facebookworld> and indicating it did not wish to pursue settlement negotiations. On February 16, 2018, the Registrar transmitted by email to the Center its verification response regarding the disputed domain names <facebookworld.com> and <facebookusers.com> confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint together with the first and second amended Complaints 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 February 21, 2018. The Center received informal email communications from the Respondent on February 21, 2018, February 22, 2018, February 26, 2018, February 27, 2018, February 28, 2018 and March 6, 2018. The Center received informal email communications from the Complainant on February 27, 2018 and March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Center commenced the Panel Appointment Process on March 14, 2018.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on March 19, 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.

4. Factual Background

The Complainant states that it 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 in 2004, the Complainant claims to have developed considerable renown and goodwill worldwide in both its services and brands, and that its FACEBOOK trademark is currently one of the most famous online trademarks in the world. As of the third quarter of 2017, the Complainant had approximately 2.07 billion monthly active users and 1.37 billion daily active users on average worldwide.

Given the exclusive online nature of the Complainant’s social networking business, and reflecting its global reach, the Complainant owns several domain names consisting of the FACEBOOK trademark. These domain names are not only the heart of the Complainant’s entire business, but also the main way for millions of users to avail themselves of its services. They include <facebook.com>, <facebook.org>, <facebook.net>, <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cn> (China), <facebook.co> (Columbia), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.co.gr> (Greece), <facebook.hu> (Hungary), <facebook.in> (India), <facebook.it> (Italy), <facebook.pk> (Pakistan), <facebook.es> (Spain), <facebook.com.tr> (Turkey), <facebook.ua> (Ukraine) and <facebook.us> (United States).

The Complainant has also made substantial investments to develop a strong presence online by being active on different social media platforms. Relevant pages are available at the following URLs:

- “www.facebook.com/Facebook”;

- “twitter.com/facebook”;

- “www.youtube.com/facebook”; and

- “www.linkedin.com/company/facebook”.

In addition to its strong presence online, the Complainant provided evidence that it has secured ownership of numerous trademark registrations around the world, including but not limited to the following examples:

The disputed domain names <facebooksupport.com>, <facebookusers.com>, and <facebookworld.com> were registered on August 8, 2017, August 6, 2017 and August 2, 2017, respectively (the Relevant Dates).

At the time of filing the amended Complaint, the disputed domain names did not resolve to any active websites. However, at the time of filing of the initial Complaint, the disputed domain name <facebooksupport.com> resolved to a website purporting to be a forum for discussion about the Complainant’s services containing sponsored links. This website prominently displayed the Complainant’s highly distinctive FACEBOOK trademarks, including its trademark.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the FACEBOOK trademark. The Complainant contends that the disputed domain names are confusingly similar to its FACEBOOK trademark. It states that the disputed domain names incorporate the Complainant’s FACEBOOK trademark in its entirety with the addition of the generic and geographical terms “support”, “world”, and “users” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the addition of the generic and geographical terms is not sufficient to distinguish the disputed domain names from the Complainant’s trademark and reinforces the confusing similarity of the disputed domain names with the Complainant’s trademark as they are strongly related to the Complainant’s activities. The Complainant further contends that the addition of the gTLD “.com” is irrelevant to a confusingly similar analysis.

The Complainant also contends that the Respondent has no rights in respect of the disputed domain names; the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark. The Complainant notes that the forum to which the disputed domain name <facebooksupport.com> previously redirected was stated to be “unofficial”. However, the Complainant contends that this was insufficient to disclaim a relationship between the Respondent and the Complainant.

The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain names. The Complainant contends that the Respondent used two of the disputed domain names <facebooksupport.com> and <facebookusers.com> to send fraudulent phishing emails or to spread malware. The Complainant also contends that, given the disputed domain names include the Complainant’s FACEBOOK trademark as well as generic or geographical terms and the Respondent redirected the disputed domain name <facebooksupport.com> to a website that mimicked the look and feel of the Complainant’s official website, Internet users would likely have believed that the Respondent is connected to the Complainant.

As to the disputed domain name <facebooksupport.com>, the Complainant contends that the inclusion of sponsored links on the website previously associated with that disputed domain name demonstrates that the Respondent was seeking to take advantage of the Complainant’s goodwill and renown for his own financial gain. Therefore, the Respondent was not making legitimate noncommercial or fair use of that disputed domain name.

The Complainant also contends that the disputed domain names <facebookworld.com> and <facebookusers.com> have been offered for sale by the Respondent demonstrating that the Respondent was seeking to profit from the Complainant’s goodwill and reputation.

Finally, the Complainant contends that the disputed domain names were registered in bad faith and in full knowledge of the Complainant’s rights. Further, it is claimed that the Respondent registered the disputed domain names with the Complainant’s FACEBOOK trademark in mind and with the intent to cause confusion for the purposes of taking unfair advantage of the Complainant’s goodwill and reputation and for perpetrating fraudulent activities.

B. Respondent

As noted earlier, on February 12, 2018, the Center received an email communication from the Respondent expressing a willingness to transfer the disputed domain names. However, on February 16, 2018, the Complainant sent an email communication submitting a second amended Complaint and indicating it did not wish to pursue settlement negotiations. The Respondent did not provide a substantive reply to the Complainant’s contentions, but indicated in the communications it filed with the Center that it purchased the disputed domain names for creating a fan forum of the Complainant, it had never received the cease-and-desist letters from the Complainant, and it had never sent fraudulent phishing emails.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trademark FACEBOOK by virtue of its numerous trademark registrations around the world as well as its extensive use of that mark since 2004.

The Panel finds that the disputed domain names contain as a first and dominant element the Complainant’s world-famous trademark FACEBOOK, combined with generic and geographical terms “support”, “users”, and “world”. It is well established that the addition of such generic or geographical words do not serve sufficiently to distinguish the disputed domain names from the Complainant’s mark and that the gTLD “.com” may be disregarded for the purposes of comparison under the first element.

The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s mark.

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:

(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or

(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers to or tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.

The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent’s use of its trademark and the Respondent is not a licensee of the Complainant.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights in the disputed domain names as well as the Respondent’s expressed willingness to transfer them to the Complainant.

C. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain names have been registered in bad faith for the following reasons:

(i) At the time of registering the disputed domain names, the Respondent must have been aware of the Complainant, its trademark FACEBOOK and the Complainant’s exclusive rights in that trademark, and the reputation and fame of that trademark. The Panel accepts the Complainant’s assertion that FACEBOOK is an internationally famous name and trademark, which has been in continuous use since 2004. Numerous decisions under the Policy have also found the Complainant’s mark to be famous and well known.

(iii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” In a communication with the Center dated February 12, 2018, the Respondent has stated “I was not aware that using this domain name was not allowed under the WIPO laws … I am very fan of the Facebook social network and my one and only goal purchasing this domain was to create an unofficial fan forum support webpage for exchanging and sharing information, tricks of good practices among Facebook fan users”. Irrespective of the Respondent’s knowledge or intentions, it was the Respondent’s responsibility to verify its rights before registering the disputed domain names. A most cursory trademark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain names would have instantly revealed the Complainant and its trademark. See in this regard section 3.2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Respondent’s repeated use of the Complainant’s FACEBOOK and trademarks throughout the content of the website previously hosted at the disputed domain name <facebooksupport.com> supports a finding that the Respondent knew of the Complainant and its trademark at the relevant dates.

The Panel is also satisfied that the disputed domain names have been used in bad faith for the following reasons:

(i) By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s FACEBOOK trademark as to the source, sponsorship, affiliation, or endorsement of the websites. The Complainant has provided evidence in an annex to the Complaint, screenshots of the website to which the disputed domain name <facebooksupport.com> previously resolved. These screenshots clearly show use of the Complainant’s FACEBOOK and trademarks throughout the website. The Panel notes that the Respondent claims that it registered the disputed domain name “to create an unofficial fan forum support webpage”. However, taking into account the nature of the disputed domain name and its website, the Panel accepts that use of these trademarks would lead Internet users to believe that the Complainant is the source of the Respondent’s websites and services, and/or the Respondent is sponsored by, or affiliated with, the Complainant. The Panel accepts the Complainant’s assertion that the word “unofficial” on the website associated with the disputed domain name <facebooksupport.com> does not provide a sufficient disclaimer to dispel this belief. The confusing similarity is reinforced by the addition of the generic term “support” in the disputed domain name <facebooksupport.com>. The term “support” is strongly related to the Complainant and its activities by the fact that the Complainant’s official email addresses for its support services is “[…]@support.facebook.com”.

(ii) The likelihood of confusion was created for the purposes of fraudulent and commercial gain (irrespective of the amount of gains) and with an intention of diverting Internet traffic intended for the Complainant. The disputed domain name <facebooksupport.com> resolved to a website purportedly intended to provide a forum discussion in relation to the Complainant’s services but which, in reality, contained pay-per-click links to products and services unrelated to the Complainant’s services. The Panel finds this supports a finding of use in bad faith under paragraph 4(b)(iv) of the Policy.

(iii) The use of the disputed domain name <facebooksupport.com> to send phishing emails or spread malware to Facebook users, notably using the address “[…]@facebooksupport.com”, constitutes use for a fraudulent purpose. The Respondent claims that it never sent any phishing emails but also states that “someone unknown” to the Respondent was sending “hundreds of these emails every day impersonating the Facebook style emails”. The Respondent acknowledged having received all bounced emails in response to the phishing emails from <facebooksupport.com> and also claimed that “technically anyone can impersonate the use of any email address”. Finally, the Respondent speculated that “whoever is sending these emails could be the previous owner of this domain”.

The Panel is not able to make any conclusive findings as to who sent the phishing emails, although it regards the Respondent’s explanations as inherently improbable. Importantly, however, the Respondent has stated that it was aware of the “sending [of] hundreds of these emails every day impersonating the Facebook style email” and using the address “[. . .]@facebooksupport.com”. But yet the Respondent took no steps to stop this. The Respondent’s failure to take immediate and active steps to stop phishing from <facebooksupport.com> (which incorporated the well-known Facebook trade mark without authority) supports a finding of use in bad faith under paragraph 4(b)(iv) of the Policy in relation to that disputed domain name.

(v) The offer for sale of the disputed domain names <facebookworld.com> and <facebookusers.com> shows a clear intention on the part of the Respondent to use the Complainant’s mark for its own profit. The Panel notes that on October 4, 2017 the disputed domain name <facebookusers.com> was for sale for USD 2,000. Such a price is clearly far in excess of the Respondent’s out-of-pocket expenses in acquiring the disputed domain name in the first place.

The Panel also accepts the Complainant’s assertion that the fact that the disputed domain names are no longer resolving to an active website does not prevent a finding of bad faith. The Panel’s above comments with respect to use in bad faith are equally relevant in support of this finding.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

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, <facebooksupport.com>, <facebookusers.com>, and <facebookworld.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: March 28, 2018