WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin

Case No. D2013-2030

1. The Parties

The Complainant is Facebook, Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondents are Seung Hee Lee of San Diego, California, United States of America (the “First Respondent”); Sang Hoon Lee of Seoul, Republic of Korea (the “Second Respondent”); Master, Inc. of San Diego, California, United States of America (the “Third Respondent”); Jung Hyun Shin of San Diego, California, United States of America (the “Fourth Respondent”).

2. The Domain Names and Registrars

The disputed domain names <facebook.com.co>, <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <faceboook.com.co>, <facebook-pages.com>, <facebooklogs.com> and <videodefacebook.com> are registered with GoDaddy.com, LLC;

The disputed domain name <facebooknoticias.info> is registered with Wild West Domains, LLC;

The disputed domain names <facebook.gt> and <facebok.com.gt> are registered with Universidad del Valle de Guatemala; and

The disputed domain name <facebook.com.ec> is registered with NIC.EC

(the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 26, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. From November 26 to November 30, 2013, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents were listed as the registrants and providing the contact details.

On December 5, 2013, the Center informed the Parties that the language of the registration agreement for the domain name <facbook.com.ve> is Spanish, and invited the Complainant to either (i) provide evidence of an agreement between the Parties that the proceedings should be conducted in English; (ii) submit the Complaint translated also into Spanish; or (iii) submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On December 9, 2013, the Complainant submitted a request for English to be the language of the proceedings. The Respondents neither filed language submissions nor responded to the Complainant’s request. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 17, 2013 and dropped the domain name <facbook.com.ve> from the original Complaint.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 8, 2014.

The Center appointed David J.A. Cairns as the sole panelist in this matter on January 16, 2014. 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 a United States corporation that operates online social networking services through the “www.facebook.com” website. It has a global presence as well as considerable reputation and goodwill in both its services and its brands.

The Complainant’s services were first offered in February 2004 and since then the Complainant has constantly grown and acquired goodwill. As of March 2013, the Complainant provided authorized social networking services to over 1.11 billion monthly active users and 665 million daily users worldwide.

The “www.facebook.com” website is ranked as the second most visited website in the world.

Since 2004 the Complainant has owned numerous domain names consisting of the term “facebook” or a misspelling of it. The Complainant has also registered numerous domain names that consist of the FACEBOOK trademark plus the addition of a generic or descriptive term.

The Complainant has registered numerous trademarks for the trademark FACEBOOK including International Trademark No. 1075807 for FACEBOOK registered on July 16, 2010. There are several United States trademark registrations for FACEBOOK, including, for example, trademark registration No. 3659516 filed on August 29, 2006.

The disputed domain names were registered between September 28, 2010 and January 20, 2013.

The Panel viewed the websites hosted at the disputed domain names on January 23, 2014. Seven of the disputed domain names (i.e. <facebook.com.co>, <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <facebook.com.ec>, <facebook.gt>, <facebok.com.gt>) redirected to a web page offering fresh news on popular topics (“www.kpopnoticias.com”), and including a link to register to Facebook. The disputed domain names <facebook-pages.com> and <facebooklogs.com> resolved to webpage containing various links, including several links to Facebook, as well as links advertising unrelated services. In addition the web page advised that the disputed domain name <facebooklogs.com> is for sale. The disputed domain names <videodefacebook.com>, <facebooknoticias.info> and <faceboook.com.co> pointed to holding pages.

All of the registration agreements by which the disputed domain names were registered incorporate the UDRP Policy.

5. Parties’ Contentions

A. Complainant

The Complainant argues that a single person is behind the Respondents and so all Respondents are named in a common Complaint.

The Complainant alleges that the language of the proceedings should be English for the following reasons: (i) the Complaint relates to twelve disputed domain names and it appears that the language of the registration agreements of at least eleven out of the twelve disputed domain names is English and that the registration agreement for <facebook.com.ec> is available in both English and Spanish; (ii) the WhoIs report for the disputed domain name <facebook.com.ec> indicates that the registrant of this disputed domain name is an individual located in the United Sates and the Complainant assumes that therefore it is likely to have a good understanding of the English language; (iii) the Respondents have not contested the Complainant’s request that English be the language of the proceedings; (iv) given that the activities carried out by <facebook.com.ec> are illegitimate it would be disproportionate to require the Complainant not to submit the present Complaint in English and incur in costs of translation.

The Complainant states that the user experience on the Complainant’s website and trust in the Complainant’s social networking services are not only crucial to maintain the value and distinctiveness of the FACEBOOK trademark, but also vital to the success of the Complainant’s business.

The Complainant submits that the disputed domain names are identical or confusingly similar to the FACEBOOK trademarks. The Complainant divides the disputed domain names into the following groups:

(i) The disputed domain names <facebook.com.co>, <facebook.gt> and <facebook.com.ec> consist of the FACEBOOK trademark. Previous UDRP panels have decided that when a domain name wholly incorporates a complainant’s registered trademark that is sufficient to establish identity or confusing similarity.

(ii) The disputed domain names <fcebook.com.co>, <facbook.com.co>, <faebook.com.co> and <faceboook.com.co> consist of a misspelling of the FACEBOOK trademark. The Complainant alleges that the registration of these disputed domain names can be considered as typo-squatting. The Complainant argues that the terms “fcebook”, “facbook”, “faebook” and “faceboook” have no independent meaning whatsoever. The Complainant further alleges that according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”

(iii) The disputed domain names <facebook-pages.com>, <videodefacebook.com>, <facebooklogs.com> and <facebooknoticias.info> only differ from the Complainant’s trademark by the addition of generic terms. Previous panels have held that a domain name that wholly incorporates a trademark may be confusingly similar to such a trademark for purposes of the Policy despite the addition of common or generic words. Moreover, all of these generic terms relate to the Complainant’s activities, which reinforces the confusing similarity with the Complainant’s trademark, as held by previous UDRP panels.

The Complainant also argues that the fact that the Complainant has registered domain names which are highly similar to the disputed domain names, before the Respondents registered the disputed domain names, also increases the likelihood of confusion.

The Complainant further argues that the addition of a hyphen or a dash in a domain name has been held on numerous occasions to be insufficient to avoid confusion. Finally, the Complainant argues that the mere addition of the respective generic Top-Level Domain (“gTLD”) and country-code Top-Level Domain (“ccTLD”) suffixes “.com”, “.info”, “.com.co”, “.gt”, “.com.gt” and “.ec” does not constitute a sufficient element of distinctiveness which should be taken into consideration when evaluating the similarity of the FACEBOOK name and trademark with the disputed domain names.

The Complainant submits that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant argues that several previous panels have found under the Policy that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name the evidentiary burden shifts to the registrant. The Complainant asserts that the Respondents are not authorized dealers, distributors, or licensees of the Complainant, nor have been otherwise allowed by the Complainant to make use of the FACEBOOK trademark. The Complainant further alleges that it has carried a preliminary search which has revealed that the Respondents have no Colombian, Ecuadorean, Guatemalan, Korean, or United States of America trademark rights in the term ”facebook”, nor in any of the following jurisdictions: Canada, Mexico, Austria, Benelux, Czech Republic, Denmark, Finland, France, Germany, Hungary, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Monaco, Norway, Poland, Portugal, Slovak Republic, Spain, Sweden, United Kingdom of Great Britain and Northern Ireland, Australia, China and Japan.

The Complainant further submits that the Respondents cannot assert that their use of the disputed domain names is in connection with a bona fide offering of goods and services as most of the disputed domain names seem to be being used as part of a revenue generating-scheme. In addition, there is no legitimate reason which could explain why the highly distinctive and renowned FACEBOOK trademark is being used by the Respondents in connection with such activities except to take advantage of the significant goodwill in the term “facebook” and mislead Internet users. The Complainant further states that neither can the Respondents claim they made demonstrable preparations to use the disputed domain names prior to notification of this dispute by the Complainant in connection with a bona fide offering of services. As held by previous UDRP panels use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services. There is no evidence that the websites to which the disputed domain names resolve were ever used for a legitimate purpose, or that the Respondents had intended to do so. The Complainant also alleges that to its knowledge the Respondents have no competing name or trademark rights in the disputed domain names and therefore cannot assert that they are commonly known by the disputed domain names. Finally, the Complainant argues that the Respondents’ use of the disputed domain names is misleading internet users and so cannot be seen as fair or legitimate.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. With regard to the disputed domain name <facebooklogs.com>, the Complainant argues that it was acquired by the First Respondent with a view to selling it to the Complainant or to a competitor of the Complainant for an amount in excess of its out of pocket costs. The website to which this disputed domain name points allows the First Respondent to offer the disputed domain name for sale for at least USD 2,000. The Complainant argues that although the practice of selling domain names in itself is not objectionable, it becomes so when the domain names are or include famous trademarks. It is further submitted by the Complainant that the Respondents have registered the disputed domain names in order to prevent the Complainant from reflecting its trademarks in the corresponding disputed domain names, engaging in a pattern of illegitimate registrations. The Complainant submits that the Respondents anticipated that the Complainant would be interested in registering the term “facebook” by itself, misspelled or in connection with the terms “pages”, “log” and “video” under the gTLD and ccTLD “.com”, “.info”, “.com.co”, “.gt”, and “.ec” extensions and thus registered the disputed domain names to prevent the Complainant from reflecting its activities in these disputed domain names. The Complainant alleges that previous UDRP panels have held that there can be no legitimate purpose for the use of a domain name incorporating an entire trademark owned by another. The Complainant argues that the Respondents could not have been unaware of the Complainant and its rights at the time of the registration of the disputed domain names given the Complainant’s fame worldwide, including in the United States and in the Republic of Korea where the Respondents are based, in particular given that five of the disputed domain names (i.e. <facebook.com.co>; <fcebook.com.co>; <facbook.com.co>; <faebook.com.co>; and <facebook.com.ec>) redirect to “www.facebookappscenter.com”, which reproduces the Complainant’s design, and two of the disputed domain names (i.e. <facebook.gt> and <facebok.com.gt>) resolve to “www.facebookfotospot.com”, a website which describes itself as being the “Web page of photography for Facebook”. The only reason that the Respondents could possibly have registered the disputed domain names was to seek to unjustly benefit from such rights and ultimately take advantage of the Complainant, and to cause Internet users to believe that the disputed domain names were somehow sponsored by, associated or affiliated with the Complainant.

The Complainant finally submits that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on the Respondents’ website or location. The Complainant alleges that given that the disputed domain names reproduce the exact FACEBOOK trademark or a misspelling of it, while it is one of the world’s most famous and distinctive trademarks, it is submitted that it is not possible to conceive of a plausible circumstance in which the Respondents could legitimately use the disputed domain names in good faith and the disputed domain names could not reasonably have been chosen for any reason other than to benefit from the considerable goodwill and reputation attached to the renowned FACEBOOK trademark and to attract Internet users to the Respondents’ websites. The Complainant further submits that the passive holding of several of the disputed domain names constitutes bad faith use of the disputed domain names.

The Complainant requests that the Panel transfer the disputed domain names to the Complainant.

B. Respondent

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

6. Discussion and Findings

Multiple Respondents

A feature of this Complaint is that it identifies four separate Respondents. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. There is, therefore, a procedural issue as to whether the Complaint complies with paragraph 3(c) of the Rules.

Also relevant in this context is paragraph 10 of the Rules (General Powers of the Panel). Paragraph 10(e) empowers the Panel to consolidate multiple domain name disputes “in accordance with the Policy and these Rules”. Paragraph 4(f) of the Policy also provides for consolidation at the discretion of the Panel.

Paragraph 3(c) has not been applied formalistically by previous UDRP panels. Panels have looked at the reality of domain name ownership, and permitted that multiple domain names registered to nominally different registrants appear in a single complaint where it is satisfied that behind the different registration details there is, in fact, the same domain name holder.

Paragraph 4.16 of the WIPO Overview 2.0 states that UDRP panels have articulated principles governing the question of whether a single complaint may be brought against multiple respondents that encompass situations “…where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”

The UDRP panel decisions and applicable principles for multiple respondents are usefully reviewed in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

Paragraph 10(e) is a wider provision than paragraph 3(c) as it authorizes consolidation even where multiple domain name disputes do not involve the same domain name holder. Accordingly, a complainant can commence a proceeding with a single complaint on the basis of the assertion that multiple domain names are registered by the same domain name holder, and even if the panel ultimately does not accept that the domain name holder is in fact the same, can still allow the single complainant to proceed on the basis of its consolidation power in paragraph 10(e) provided there is a sufficient nexus between the disputed domain names to justify consolidation, and provided also that the distinct respondents “are treated with equality and that each Party is given a fair opportunity to present its case” (paragraph 10(b) of the Rules). The Panel notes that a single consolidated proceeding against distinct respondents raises potential issues of prejudice to the Respondents’ procedural rights (e.g. the right of individual Respondents to elect a three member panel: see Apple Inc. v. Private Whois Service, WIPO Case No. D2011-0929) as well as substantive prejudice, given that individual purpose and intention are such important elements of bad faith.

The Panel is satisfied that despite the use of different names for registration purposes, the twelve disputed domain names are all in fact registered by the same domain name holder. The following factors lead the Panel to this conclusion: (i) the common features of the disputed domain names themselves, and in particular their confusing similarity with the famous FACEBOOK trademark, the use of “.com” as a second level domain (in seven disputed domain names), and the ccTLD concentrated in three Latin American jurisdictions (eight domain names); (ii) ten disputed domain names share the same postal address; (iii) eleven domain names have the names either of Jung Hyun Shin or Seung Hee Lee as the Registrant or in the contact details and (with only one exception being <facebook.com.ec>) at the same address. Two disputed domain names include both names in the technical/administrative contact details; (iv) seven of the disputed domain names redirect to the same website at “www.kpopnoticias.com”; (v) six of the disputed domain names share the same email address at […]@hotmail.com; and (vi) none of the Respondents has filed a Response or denied a common ownership of the disputed domain names.

The disputed domain name with least in common with the others is <facebook-pages.com> which is the only registration outside the United States, and the only registration in the name of Sang Hoon Lee. However, it also misuses the FACEBOOK trademark, shares the same email address ([…]@hotmail.com) as five other disputed domain names, and the named Respondent has not filed a Response. For these reasons, the Panel is satisfied that this domain name is in fact part of the same person or enterprise.

It is true that these facts are equally consistent not only with one Respondent but with various Respondents working together. The Panel is satisfied that the disputed domain names represent a single entity or individual and therefore a single, domain name holder, and were properly joined by the Complainant in a single Complaint.

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.”

With eleven of the twelve disputed domain names the language of the respective registration agreement is English (<facebook.com.co>, <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <faceboook.com.co>, <facebook-pages.com>, <facebooklogs.com>, <videodefacebook.com>, <facebooknoticias.info>, <facebook.gt> and <facebok.com.gt>).

With regard to the disputed domain name <facebook.com.ec> the Registrar (NIC.EC) indicated to the Center that “Currently the default language for the Administrative Contact that manages this domain name is English, however apparently at the moment of registering the domain facebook.com.ec was in the Spanish site.” The Panel notes that the registration agreement for this disputed domain name is available in both English and Spanish.

The Respondents have not contested the Complainant’s request that the language of the proceedings be English. Further, as the Panel has determined that all twelve disputed domain names originate from a single person or enterprise then there are no grounds to justify a determination for <facebook.com.ec> in Spanish. Therefore, pursuant to paragraph 11(a) of the Rules, the Panel determines that the language of the proceedings for <facebook.com.ec> shall be English.

For these reasons the twelve disputed domain names can be dealt with in a single decision.

Applicable Rules to the Complaint

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondents have rights or legitimate interests in the disputed domain names.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant owns the trademark registrations for FACEBOOK referred to above. The Panel also accepts that the trademark FACEBOOK has acquired considerable goodwill and renown worldwide.

The disputed domain names can be classified in three different groups:

(i) The disputed domain names <facebook.com.co>, <facebook.gt> and <facebook.com.ec> consist of the FACEBOOK trademark with ccTLD extensions and (in two cases) the generic “.com” second level extension.

The WIPO Overview 2.0, paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms ... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”

In the present case, the Panel considers that on a straightforward visual comparison the disputed domain names are clearly confusingly similar to the FACEBOOK trademark because they wholly incorporate it with the addition of the second level suffix “.com” and the ccTLD “.co” (Colombia), “.gt” (Guatemala) and “.ec” (Ecuador). In addition, the Panel finds that the “.com”, “.co”, “.gt”, and “.ec” suffixes should not be taken into account when evaluating the degree of confusing similarity between the trademark and the disputed domain names (see Southern California Gas Company v. Itzik Levi, WIPO Case No. D2012-1752). The Panel therefore also finds that these disputed domain names are identical to the Complainant’s FACEBOOK trademark.

(ii) The disputed domain names <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <faceboook.com.co>, and <facebok.com.gt> consist of misspellings of the FACEBOOK trademark.

The WIPO Overview 2.0, paragraph 1.10 states that “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”

In the present case, the Panel considers that on a straightforward visual comparison the disputed domain names are confusingly similar to the FACEBOOK trademark for the following reasons: (i) the only difference between these disputed domain names and the trademark FACEBOOK is either the omission or the addition of one single letter remaining the misspelled trademark FACEBOOK as the dominant component of the disputed domain names; (ii) moreover, the additions or omissions present in the disputed domain names, and in particular in <facbook.com.co> and <facebok.com.gt>, make the disputed domain names coincide phonetically with the word FACEBOOK as it is pronounced in the Spanish language; (iii) the terms “fcebook”, “facbook”, “faebook”, “faceboook” and “facebok” have no independent meaning whatsoever.

(iii) The disputed domain names <facebook-pages.com>, <videodefacebook.com>, <facebooklogs.com> and <facebooknoticias.info> differ from the Complainant’s trademark by the addition of generic terms.

The disputed domain names are not identical with the Complainant’s trademark. The disputed domain names incorporate the Complainant’s trademark entirely adding the generic terms “pages”, “videode” (which means “video of” in Spanish), “logs” and “noticias” (which means “news” in Spanish).

In the present case, the Panel considers that on a straightforward visual comparison the disputed domain names are confusingly similar to the FACEBOOK trademark for the following reasons: (i) the disputed domain names incorporate in its entirety the term “facebook”; (ii) “Facebook” is an invented word as well as a globally well-known trademark and therefore is distinctive; (iii) “pages”, “videode”, “logs” and “noticias” are all common or descriptive terms which are insufficient to distinguish the disputed domain names from the Complainant’s well-known trademark; and (iv) the common terms “pages”, “videode”, “logs” and “noticias” actually make reference to core services offered by the Complainant and therefore they reinforce the confusing similarity with the FACEBOOK trademark, suggesting that they are services offered by the Complainant.

For these reasons the first element of the Policy is satisfied in respect of all twelve disputed domain names.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondents in the disputed domain names: (i) there is no evidence that the Respondents have any proprietary or contractual rights in any registered or common law trademarks corresponding in whole or in part to the disputed domain names; (ii) the Respondents are not authorized or licensed by the Complainant to use the FACEBOOK trademark or to register and use the disputed domain names; (iii) there is no evidence that the Respondents have been commonly known by the disputed domain names.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the disputed domain names. With regard to paragraph 4(c)(i), the Panel is satisfied that the disputed domain names have not been used in respect of a bona fide offering of goods or services. Rather, the disputed domain names were all adopted with full knowledge of the FACEBOOK trademark, and have been used opportunistically to take advantage of the fame of the FACEBOOK trademark.

Typo-squatting is by definition opportunistic and not bona fide. Some of the disputed domain names are currently used for advertisements or as links to offers for products or services mostly unrelated to the Complainant (i.e. <facebook-pages.com> and <facebooklogs.com>) which is not bona fide. None of the disputed domain names appear to have been used to maintain any specific offer of any goods or services; rather they have had multiple and variable uses in order to exploit the force of the Complainant’s trademark to attract Internet users. Currently seven of the disputed domain names (i.e. <facebook.com.co>, <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <facebook.com.ec>, <facebook.gt> and <facebok.com.gt>) redirect to a web page offering fresh news on popular topics (“www.kpopnoticias.com”). This website has no apparent commercial purpose, and also has no relationship to the Complainant’s trademark or to the content of the domain names, so cannot give rise to any rights or legitimate interests in these disputed domain names.

Paragraph 4(c)(ii) does not apply as there is no evidence that the Respondents are known by the disputed domain name.

With regard to paragraph 4(c)(iii) the Respondents are not making a legitimate noncommercial or fair use of the dispute domain names, without intent for commercial gain to misleadingly divert consumers. Rather, the Respondents are relying on the Complainant’s famous trademark to attract Internet users to their websites on the basis that the websites have some connection with the Complainant or its services, and this is misleading.

Accordingly, and in the absence of any response from the Respondents providing any evidence to support a possible basis on which the Respondents may have acquired rights or legitimate interests in respect of any of the disputed domain names, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the domain name is registered in bad faith and also is being used in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be “in particular but without limitation”.

The Panel finds that the circumstances of paragraph 4(b)(i) are present in this case with regard to the disputed domain name <facebooklogs.com> because the First Respondent knew of the FACEBOOK trademark when registering the disputed domain name and the website to which this domain name displays sponsored links and points offers the disputed domain name for sale for USD 2,000.

The Panel further finds that the disputed domain names <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <faceboook.com.co> and <facebok.com.gt> are clear cases of typo-squatting. The Panel finds that the Respondents knew of the Complainant’s business and trademark at the time of registration of the disputed domain names, and registered these disputed domain names with the intention of attracting Internet traffic based on a typing error. Typo-squatting, in itself, constitutes registration and use in bad faith (see La Quinta Worldwide, L.L.C. v. PrivacyProtect.org, Domain Admin / Jean Marie Bergeron, BGSR Media Systems SA, WIPO Case No. D2011-2236).

The disputed domain names <facebook.com.co>, <videodefacebook.com> and <facebooknoticias.info> have in the past (on April 30, 2011, March 21, 2012 and April 21, 2013 respectively) been used for sponsored links, to advertise products and services unrelated to the Complainant, or to purport to be the Complainant’s page in Spanish (<facebooknoticias.info>). This demonstrates that these domain names were registered in bad faith, and the Panel concludes are being held in bad faith. The Panel has used the Internet Archive for this purpose. It is permissible for the Panel to use of the Internet Archive (at “www.archive.org”) in this way (see WIPO Overview 2.0, paragraph 4.5).

In addition, the Internet Archive reveals that <facebook.gt> and <facebook.com.ec> have also been used in the past to suggest that they are in fact the Complainant’s webpage or are authorized by the Complainant. The disputed domain names <facebook-pages.com> and <facebooklogs.com>are used to direct Internet users to websites advertising services unrelated to the Complainant. The Panel finds in the circumstances of this case that this is misleading for the Internet users and constitutes bad faith.

The Panel finds that all twelve of the disputed domain names were registered and have been used and are currently being used opportunistically and with a willful indifference to the Complainant’s trademark rights and in deception of Internet users. This constitutes registration and use in bad faith, irrespective of whether the Respondents have made any commercial gain from the registrations (see Accor v. PrivacyProtect.org / Petr Kozir WIPO Case No. D2013-0156). This opportunistic use and the resultant bad faith are exacerbated in this case by the fact that there is a pattern of conduct affecting twelve domain names based on the FACEBOOK trademark.

For these reasons the Panel finds that the disputed domain names were registered and are being used in bad faith, and the third element of the Policy is satisfied.

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, <facebook.com.co>, <fcebook.com.co>, <facbook.com.co>, <faebook.com.co>, <faceboook.com.co>, <facebook-pages.com>, <facebooklogs.com>, <videodefacebook.com>, <facebooknoticias.info>, <facebook.gt>, <facebok.com.gt> and <facebook.com.ec> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist
Date: February 6, 2014