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 Protection Domain of Panama City, Panama.
The disputed domain name <fracebook.com> is registered with Above.com, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2015. On July 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 4, 2015.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on August 10, 2015. 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 network services available for Internet users under the domain name <facebook.com> and via applications on relevant mobile devices. It is the holder of registered trademarks containing FACEBOOK in numerous jurisdictions worldwide. Details of some of its registrations are:
- United States Trademark Registration No. 3041791, FACEBOOK (word mark), registered on January 10, 2006 (first use in commerce in 2004);
- United States Trademark Registration No. 3122052, FACEBOOK (word mark), registered on July 25, 2006 (first use in commerce in 2004);
- Community Trade Mark Registration No. 004535381, FACEBOOK (word mark), registered on June 22, 2011 for goods and services in classes 35 and 38;
- International Trademark Registration No. 1075094, FACEBOOK (figurative mark), registered on July 16, 2010 for goods and services in classes 9, 35, 36, 38, 41, 42 and 45;
- International Trademark Registration No. 1075807, FACEBOOK (word mark), registered on July 16, 2010 for goods and services in classes 9, 35, 36, 38, 41, 42 and 45.
The disputed domain name was registered on March 12, 2013.
The Complainant states that it was founded in 2004 as a social network restricted to students at Harvard University before it expanded to other universities and, in 2006, "to anyone in the world with a valid email address". It claims to be the world's leading provider of online social network services. It states that it grew from about 1 million active users by the end of 2004 to 1.44 billion users worldwide as of the time of the Complaint, with its main website "www.facebook.com" currently being ranked as the second most viewed website worldwide. Its service is provided in over 70 languages, with approximately 82.8 percent of its active users living outside the United States and Canada.
Because of this, the Complainant has developed considerable reputation and goodwill both with its users and in the international market. It claims that FACEBOOK is one of the most famous online trademarks and one of the top rising brands both online and offline. This would also be due to substantial investments in several social media platforms, for example on Facebook itself, where its official page has approximately 164 million "likes" and on Twitter, where it has over 13.9 million followers.
The Complainant emphasizes that due to its presence being exclusively by online, its numerous domain names containing the trademark FACEBOOK are a crucial part of its entire business. Some of its domain names are: <facebook.com>, <facebook.org>, <facebook.net>, <facebook.biz>, <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cn> (China), <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 Complainant states that it denotes significant resources to protect its trademark rights and goodwill and cites several domain name disputes it has undertaken in the past. These contentions are substantiated by several Internet excerpts.
The disputed domain name redirects Internet users to "www.facebnok.com", which again redirects to dynamic advertising pages including a website asking users to take a survey about Facebook, allegedly offering EUR 50 to the winner. Furthermore, the Respondent's website accessible through the disputed domain name causes positive results in several malware scans and has thus been blocked for being malicious.
The Complainant submits that the disputed domain name is confusingly similar to the trademark FACEBOOK, in which the Complainant has rights. The disputed domain name is nearly identical to the Complainant's trademark, the only difference being the additional letter "r" between the "f" and the "a", which is a common typographical error occurring when a user tries to write "facebook" on a computer keyboard. However, a common misspelling is insufficient to distinguish a domain name from a complainant's trademark. The same applies to the mere addition of the generic Top-Level-Domain ("gTLD") ".com".
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has neither acquired a license nor has it otherwise been permitted to use any of the Complainant's trademarks or any variations thereof. The Respondent is not engaged in a bona fide offering of goods and services either. It is not commonly known by the name "Facebook", and it had no legitimate reason to register the disputed domain name containing the Complainant's trademark. The registration was merely meant to mislead Internet users to the Respondent's website in order to obtain financial gain (commonly known as "typo-squatting") by creating a likelihood of confusion.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. Because of the high level of brand awareness that the Complainant enjoys, the Respondent must have been aware of the FACEBOOK trademark. The Complainant had grown substantially by the time the disputed domain name was registered. Moreover, the disputed domain name consists of an obvious typographical error of the Complainant's trademark. It is therefore not conceivable that the Respondent would have been unaware of the Complainant's trademark rights. Therefore, the purpose of registering the disputed domain name could only be to deliberately take advantage of a typographical error made by Internet users in order to divert them to the Respondent's website and achieve commercial gain. Additionally, the disputed domain name is suspected of being used to spread malicious content to Internet users being derived to the Respondent's website. By this, the Respondent tries to benefit from the reputation and goodwill of the Complainant.
In terms of remedy, the Complainant requests the transfer the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following requirements to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical with 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 name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In accordance with the Rules, paragraph 5(b)(i), it is expected of the Respondent to "[r]espond specifically to the statements and allegations contained in the Complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]".
In the present case, the Center has employed all the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.
In the event of a default, under the Rules, paragraph 14(b) "[…] the panel shall draw such inferences therefrom as it considers appropriate." As stated by numerous panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the respondent has not submitted any evidence and has not contested the contentions made by the complainant, the panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the complainant: "[…] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence."
In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law it deems applicable.
The test for identity or confusing similarity under paragraph 4(a)(i) of the Policy is limited to a direct comparison between the Complainant's mark and the disputed domain name itself. In this case, the Complainant has demonstrated registered trademark rights in the mark FACEBOOK. The disputed domain name consists of the term <fracebook.com>.
The FACEBOOK trademark is internationally famous and has a very strong reputation. The term "facebook" is highly distinctive and exclusively associated with the Complainant. The disputed domain name corresponds to the Complainant's trademark in almost every character, the only difference being an additional "r" between the "f" and the "a". This additional character constitutes a typical typographical error. This so called "typo-squatting" is admittedly intended to create the likelihood of confusion (see National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011). The additional "r" therefore does not diminish confusing similarity with the Complainant's trademark.
Furthermore, the addition of the gTLD ".com" cannot lead to any other finding, as it is generally accepted that the mere addition of a gTLD is irrelevant for the assessment of similarity. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case, the Complainant has submitted that the Respondent lacks any rights or legitimate interests as it is not a licensee, nor is it otherwise permitted to register and use the disputed domain name, nor is it known by the disputed domain name.
The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Rather, as the Complainant has stated and remained uncontested, the Respondent has registered the disputed domain name to deliberately take advantage of a typographical error made by Internet users in order to divert them to the Respondent's website and achieve commercial gain. The reputation of the FACEBOOK mark and the fact that the website is suspected of being used to spread malware are strong indications in favor of that notion.
Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name.
Hence, the burden of production has been placed on the Respondent. In such case, the Respondent may demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant's contentions.
Consequently, the Panel finds that the Respondent's default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
For the purposes of the Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the domain name holder has registered or has acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the complainant, who is the owner of the trademark or service mark, or to a competitor of the complainant, for valuable consideration in excess of the domain name holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or online location or of a product or service on the domain name holder's website or location.
These criteria are nonexclusive (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Other factors alone or in combination can support a finding of bad faith (Brown & Williamson Tobacco Corp, et. Al. v. Dennis Wilkins, WIPO Case No. D2001-0865).
As noted in Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004, "In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders". With regard to the international reputation and goodwill of the Complainant and due to the fact that the disputed domain name consists of an obvious typographical error of the Complainant's trademark, the Panel is convinced that the Respondent knew of the Complainant's mark. The choice of the domain name was therefore intentional and not random. "Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith" (Société pour l'Oeuvre et la Mémoirte d'Antoine de Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085). The FACEBOOK trademark is well known and the Respondent has no connection to the Complainant, is not authorized, nor does the Respondent have a legitimate purpose to use the Complainant's trademarks. Therefore, there is a strong indication of bad faith in the present case. An additional indication of bad faith is the fact that the disputed domain name belongs to the category of "typo-squatting" domains (see Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin, WIPO Case No. D2013-2030, "Typo-squatting, in itself, constitutes registration and use in bad faith").
The disputed domain name is also being used in bad faith. It redirects Internet users to "www.facebnok.com", which again leads to dynamic advertising pages including a website asking users to take a survey about Facebook, allegedly offering EUR 50 to the winner. Considering usual Internet practices, the Respondent is undoubtedly obtaining financial gain from this redirect and display of advertisements. The Panel concurs with the view of the Complainant that such use is clearly in bad faith. Not only is the Respondent misleading Internet users into thinking that the survey about the Complainant's services appearing on the website is sponsored by the Complainant (when in fact it is not), but the Respondent is also unduly profiting from the Complainant's good will and reputation to attract visitors searching for the Complainant to its own website.
Based on these considerations, the Panel finds that registration and use of the disputed domain name took place in bad faith. Consequently, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fracebook.com> be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Date: August 13, 2015