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 Ramunas Jonikas of Atlanta, Georgia, United States, self-represented.
The disputed domain names <facebooklog.com>, <facebookphp.com>, <facebook.ws>, <likefacebook.com>, <my-facebook.com>, and <wapfacebook.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 14, 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.
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 May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018.1 The Center received informal communications from the Respondent on June 18 and 19, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 27, 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.
The Complainant is a 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 official website located at “www.facebook.com”. Since its launch in 2004, the Complainant rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 5.5 million users in December 2005, 12 million in December 2006, 50 million in October 2007, 100 million in August 2008, 500 million in July 2010, and 1 billion users worldwide by September 2012. Today, the Complainant has over 2 billion monthly active users and an average of 1.4 billion daily active users worldwide. Thus, the Complainant enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services.
The Complainant owns numerous trademark registrations in many jurisdictions throughout the world. Such trademark registrations include, but are not limited to, FACEBOOK, United States Registration No. 3,041,791, registered on January 10, 2006, with its first use in commerce in 2004; FACEBOOK, United States Registration No. 3,122,052, registered on July 25, 2006, with its first use in commerce in 2004; FACEBOOK, International Trademark No. 1075094, registered on July 16, 2010; and International Trademark No, 1232015, registered on December 15, 2014 (hereinafter referred to as the “FACEBOOK Mark”).
In addition to its official domain name, <facebook.com>, the Complainant is the owner of numerous domain names consisting of or including the FACEBOOK Mark, for instance, <facebook.org>, <facebook.net>, <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cn> (China), <facebook.co> (Colombia), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.com.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 Respondent registered the Disputed Domain Names on the dates listed below:
|
<facebook.ws> |
January 17, 2006 |
|
<likefacebook.com> |
November 13, 2007 |
|
<wapfacebook.com> |
November 18, 2007 |
|
<my-facebook.com> |
November 19, 2008 |
|
<facebooklog.com> |
November 22, 2007 |
|
<facebookphp.com> |
November 16, 2007 |
At the time of filing, the Disputed Domain Names <facebook.ws> and <likefacebook.com> both redirected to parking pages with sponsored pay-per-click links that displayed the terms “Facebook Login”, “Facebook Signup”, “Facebook Search”, “Facebook Home”, “Facebook Mobile”, “Facebook Profile Views”, “Facebook Status” and “Facebook Account”. Upon clicking these links, the following message is displayed: “We were unable to find results for your search term [‘link’]”.
The website to which the Disputed Domain Name <likefacebook.com> resolves contains a link stating “Enquire about this domain”, which redirects to a webpage indicating that the Disputed Domain Name may be for sale. Upon clicking this link, Internet users are redirected to a domain sponsor website where they are invited to make an offer to acquire the Disputed Domain Name.
The remaining Disputed Domain Names, <facebooklog.com>, <facebookphp.com>, <my-facebook.com> and <wapfacebook.com> all resolve to error pages indicating that the Disputed Domain Names could not be located. Thus, the above-mentioned Disputed Domain Names are being used passively.
On February 2, 2018, the Complainant’s lawyers sent a cease and desist letter to the Respondent asserting the Complainant’s trademark rights and asking the Respondent to transfer the Disputed Domain Names to the Complainant. No response from the Respondent was received.
The Complainant contends that:
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
- The Disputed Domain Names were registered and are being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
In an email dated June 18, 2018, the Respondent stated that he agreed to a voluntary transfer of the Disputed Domain Names to the Complainant. The Complainant declined the voluntary transfer, preferring to receive a full decision by the Panel.
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
This element consists of two parts: First, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the FACEBOOK Mark based on both longstanding use as well as its numerous national and international trademark registrations for the FACEBOOK Mark. The Disputed Domain Name <facebook.ws> consists of the FACEBOOK Mark followed by the country code abbreviation for Samoa. The Disputed Domain Name <likefacebook.com> consists of the FACEBOOK Mark preceded by the descriptive word “like”, and followed by the generic Top- Level Domain (“gTLD”) “.com”. The Disputed Domain Name <wapfacebook.com> consists of the FACEBOOK Mark preceded by the acronym “wap”,2 and followed by the gTLD “.com”. The Disputed Domain Name <my-facebook.com> consists of the FACEBOOK Mark preceded by the word “my” connected by a hyphen, and followed by the gTLD “.com”. The Disputed Domain Name <facebooklog.com> consists of the FACEBOOK Mark followed by the word “log”, and followed by the gTLD “.com”. The Disputed Domain Name <facebookphp.com> consists of the FACEBOOK Mark followed by the term “php”,3 and followed by the gTLD “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony, WIPO Case No. D2011-2067 (same). This is especially true where, as in the present case, the descriptive or generic terms “wap”, “log”, and “php” are associated with the Complainant and its goods or services. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Further, although the Disputed Domain Name <my-facebook.com> contains a hyphen between the words “my” and “facebook”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656; Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” or a country code such as “.ws” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s FACEBOOK Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Names for commercial gain.
Moreover, the Respondent’s registration and use of some of the Disputed Domain Names to resolve to websites with commercial links to third-party advertisements does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name). The fact that the remaining Disputed Domain Names are merely pointing to error pages is another indication that the Respondent lacks rights or legitimate interests in these Disputed Domain Names.
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s FACEBOOK Mark prior to registering the Disputed Domain Names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Names after the Complainant first registered and used the FACEBOOK Mark and especially since the Complainant has enjoyed a high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services.
The longstanding and public use of the FACEBOOK Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Names indicates that it was made in bad faith.
Second, the Panel finds that the Respondent used some of the Disputed Domain Names in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s landing pages consisting of pay-per-click sponsored links by creating a likelihood of confusion with the Complainant’s FACEBOOK Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. It is well-established that the use of parking pages in this manner is evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Moreover the Respondent’s offer to sell the Disputed Domain Name <likefacebook.com> is also evidence of the Respondent’s bad faith registration and use under paragraph 4(b) of the Policy.
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Names in bad faith in an attempt to create a likelihood of confusion with the FACEBOOK Mark.
Third, by using some of the Disputed Domain Names passively, the Respondent has registered and is using those Disputed Domain Names in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335).
Fourth, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent has registered 51 domain names, many of which include well-known trademarks. Such pattern of cybersquatting is strong evidence of bad faith.
Finally, the fact that the Respondent did not respond to the Complainant’s cease and desist letter is additional evidence of bad faith. See Aktiebolaget Electrolux v. zhou lang, WIPO Case No. D2013-1584 (“It is well established and accepted that failure to respond to cease and desist letters without legitimate reason may be evidence of bad faith registration and use.”).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <facebooklog.com>, <facebookphp.com>, <facebook.ws>, <likefacebook.com>, <my-facebook.com>, and <wapfacebook.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: July 5, 2018
1 On June 12, 2018, the Respondent requested and received a four day extension to respond to the Complaint, thus the revised due date of June 18, 2018.
2 The term "wap" is a commonly-known acronym for "wireless application protocol". This is a technical protocol that enables extensive communications via mobile phones and is considered a descriptive term. See Harrods Ltd. v. Dijitaldjs, WIPO Case No. D2001-1163.
3 The term “php” is a commonly-known acronym for “hypertext preprocessor”, which is a scripting language designed for web development.