The Complainant is Facebook Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Shenchaoyong of Fuzhou, Fujian, China.
The disputed domain name <facebookaudiencenetwork.com> is registered with Xin Net Technology Corp. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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.
On September 15, 2015, the Complainant submitted an amendment to the Complaint, requesting the removal of one domain name from the current proceeding.
On September 17, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 17, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 in English and Chinese, and the proceedings commenced on September 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on October 20, 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 states it is the world's leading provider of online social networking services. Since its launch in 2004, Facebook has rapidly developed considerable renown and goodwill worldwide, with one million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010 and one billion users worldwide by September 2012. Today, Facebook has more than 1.49 billion active users and 968 million daily active users worldwide. The Complainant's website, "www.facebook.com", is now ranked as the second most visited website in the world. With approximately 83.1% of its daily active users outside the U.S. and Canada, the Complainant's social networking services are provided in more than 70 languages, including Chinese.
Facebook is also available for mobile devices and in recent years, has consistently ranked amongst the top "apps" in the market, with 1.31 billion mobile monthly active users and 844 million mobile daily active users (as of June 2015). On April 30, 2014, the Complainant launched "Facebook Audience Network", a network for advertisers that allows them to monetize their mobile "apps". "Facebook Audience Network" enables advertisers to serve relevant advertisements without disrupting user experience by providing them access to Facebook's two million advertisers. The launch was widely reported by the online press.
The Complainant has developed considerable reputation and goodwill worldwide in its FACEBOOK trade mark. In 2014, the FACEBOOK brand ranked 29th in Interbrand's Best Global Brands report, and was selected "top riser" for a second year in a row. The Complainant gave evidence of its U.S. trade mark registrations for FACEBOOK (first use in commerce reflected as 2004) as well as of its Chinese trade mark registrations (registered in 2009 and 2010).
The Complainant owns numerous domain names consisting of or including the term "facebook", e.g., <facebook.com>, <facebook.org>, <facebook.net> and <facebook.biz>, <facebook.com.ar>, <facebook.be>, <facebook.com.br>, <facebook.cn>, <facebook.eu>, <facebook.fr>, <facebook.de>, <facebook.in>, <facebook.it>, <facebook.es>, and <facebook.us>.
The Complainant has made substantial investments to develop a strong presence online by being active on different social media forums. The Complainant's official page on Facebook has approximately 164 million "likes". In addition, Facebook has over 13.9 million followers on Twitter. In addition to its strong presence online, the Complainant has secured ownership of numerous trade mark registrations for FACEBOOK in many jurisdictions throughout the world, including in China.
The disputed domain name was registered on April 26, 2014, a day after it was widely publicized that the Complainant would be unveiling its new mobile advertising network "Facebook Audience Network" at Facebook's F8 annual conference for developers and entrepreneurs on April 30, 2014. The disputed domain name does not resolve to any active website.
The Respondent appears to be a serial cybersquatter, having engaged in a pattern of registering domain names infringing third party brands. He has been the respondent in a number of domain name disputes involving third party brands, which have resulted in a decision against him (e.g., Bloomberg Finance L.P. v shen chaoyong, NAF Claim No. FA1520804; Fiat Chrysler Automobiles N.V. 和 FCA Bank S.P.A. 诉 Shen Chaoyong和Zaiyige, WIPO Case No. D2015-0276; Societe des Produits Nestle S.A. Shen Chaoyong, WIPO Case No. DCH2014-0013; and Koninklijke Philips N.V. Shen Chaoyong, WIPO Case No. D2014-2053).
In the case of Societe des Produits Nestle S.A. v. Liu Weihong, Nominet 14372, the panel noted as follows:
"The email address indicated on this web site is scy1216@[A], very similar to the email address indicated by Shen Chaoyong when he registered the Domain Name, namely scy1216@[B]. It is apparent from this and other factors that Shen Chaoyong has maintained control over the registration. References to "the Respondent" should therefore be taken to include the registrant and/or Mr. Chaoyong)."
The Respondent also appears to have previously been the registrant of other domain names which contain the Complainant's FACEBOOK trade mark, e.g., <facebookgraph.com.cn>, <facebookpartycall.com>, <facebooksupplier.com> and <facebooksuppliers.us>, all of which have been allowed to lapse. The Respondent is currently or was previously the registrant of approximately 1,400 domain names. Of those, at least 110 infringe third-party brands, e.g., <accenture-oracle.com>, <ikeahfc.com>, <nikeacg.cn>, <accentureoraclebusinessgroup.com>, <googlechromephone.com>, <skypehide.com>, <sonyvisualproducts.com>, <walmart2walmart.com>, <yahooaxis.us> and <youtubeanalytics.net>.
The Complainant asserts:
(i) That the disputed domain name is confusingly similar to the FACEBOOK trade mark in which it has rights. The disputed domain name incorporates the FACEBOOK trade mark in its entirety and differs from the trade mark only by the addition of the generic term "audience network".
(ii) That the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant nor has he been authorized or allowed by the Complainant to make any use of its FACEBOOK trade mark. There is no use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name does not resolve to any website and there is no evidence that the Respondent has made any preparations to use it in connection with a bona fide offering of goods or services. The failure to use the disputed domain name is a strong indication of the Respondent's lack of rights or legitimate interests. Further, given the overwhelming renown and popularity of the Complainant's FACEBOOK trade marks worldwide, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent or any third party that would not be illegitimate.
(iii) That the disputed domain name was registered and is being used in bad faith, namely in the manner described in paragraphs 4(b)(ii) and 4(b)(iv) of the Policy. It would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant's FACEBOOK trade mark at the time the disputed domain name was registered. The registration of the disputed domain name shortly after the widely publicized launch of the "Facebook Audience Network" mobile advertising network is a strong indication that the Respondent had the Complainant in mind at the time of registering the disputed domain name. The Respondent must have done so to prevent the Complainant from reflecting its trade mark and product name, "Facebook Audience Network", in a corresponding domain name. There has been a pattern of such conduct.
The fact that the Facebook website was blocked in 2009 in China does not imply that the Respondent was not aware of the Complainant's existence and its rights, particularly since the ban of Facebook in China was highly publicized and obtained wide media coverage in the international and Chinese press.
The Respondent deliberately chose to register the disputed domain name which is identical or confusingly similar to the Complainant's FACEBOOK trade mark in order to exploit the Complainant's goodwill and reputation, and to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the websites.
The Respondent did not reply to the Complainant's contentions.
The Registration Agreement is in Chinese but the Complaint was filed in English. The Complainant submitted that the language of the proceeding should be English for the reasons that follow:
(i) the disputed domain name is registered under the generic Top-Level Domain ("gTLD") ".com" extension;
(ii) the disputed domain name identically reproduces the Complainant's FACEBOOK trade mark, in conjunction with a generic English term, i.e. "audience network"; and
(iii) given that the Respondent's registration and use of the disputed domain name is "blatantly illegitimate and detrimental to the Complainant", it would be disproportionate to require the Complainant not to submit the Complaint in English. It would result in additional expense and unnecessary delay for the Complainant.
Paragraph 11(a) of the Rules stipulates 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."
The Respondent did not respond on the issue of the language of the proceeding.
In the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel finds it appropriate to hold that English shall be the language of the administrative proceeding. What is most pertinent, in the Panel's view, is the fact that the disputed domain name contains not only a widely known trade mark of U.S. origin, but also the combination thereof with the English term "audience network". The Respondent's choice of this term reflects a familiarity and comfort with the English language and an intention to target the English-speaking Internet community. It is therefore not unreasonable to surmise that the Respondent would have been able to understand the nature and essential nature of the administrative proceeding and to respond.
The Panel does not accept as a basis for its decision on the issue of the language of the proceeding the Complainant's argument that the Respondent's registration and use of the disputed domain name is "blatantly illegitimate and detrimental to the Complainant"; the substantive merits of the Complainant's case is not a relevant consideration for the purposes of making a determination on the issue of the language of the proceeding. The Panel has, however, considered as relevant the fact that if the Complainant were required to have the Complaint and all the documents translated into Chinese, it would unduly delay the proceeding since paragraph 10(c) of the Rules provides that "The Panel shall ensure that the administrative proceeding takes place with due expedition."
The Respondent had the opportunity to respond on the issue but chose not to. Moreover, all communications sent by the Center to the parties were also sent in the Chinese language.
The Panel therefore determines that English should be the language of the proceeding and believes the Respondent would not be prejudiced thereby.
The Complainant has established it has rights in the trade mark FACEBOOK, both by virtue of its trade mark registrations and by virtue of long extensive use.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's FACEBOOK trade mark as the trade mark has been incorporated in its entirety within the disputed domain name and is immediately recognizable. The addition of the generic term "audience network" does not serve to remove the confusing similarity with the FACEBOOK trade mark which, as a widely known trade mark, is exclusively associated with the Complainant.
The first element of paragraph 4(a) of the Policy has therefore been satisfied.
The Panel is also satisfied that the second element of paragraph 4(a) of the Policy has been satisfied. What cannot be ignored is the fact that FACEBOOK is such a widely known mark across the world that it would not be reasonably conceivable that the Respondent or any third party could have any rights or legitimate interests in the disputed domain name which incorporates this trade mark, unless the Complainant's authorization or licence had been obtained. The Respondent has not made any attempt to rebut with evidence the prima facie case that the Complainant has established.
The Panel has little doubt in the circumstances that the Respondent has no rights or legitimate interests in the disputed domain name.
Following from the finding above and the fact that the Respondent appears to be a "serial cybersquatter" of numerous domain names incorporating well-known trade marks, and taking into consideration the specific timing of the registration of the disputed domain name incorporating the term "audience network", the Panel finds sufficient bases to make a determination that the disputed domain name has been registered and used in bad faith. These circumstances support a finding of bad faith and registration as they reflect those described in paragraph 4(b)(ii) of the Policy.
Although the disputed domain name has not been used in respect of an active website, this does not detract from a finding of bad faith registration and use in view of the fact that the Complainant's mark is a widely known trade mark (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The third element of paragraph 4(a) of the Policy has therefore been satisfied.
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 <facebookaudiencenetwork.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: November 1, 2015