The Complainant is Facebook, Inc. of Menlo Park, California, United States of America ("United States of America") represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Eufiso Srl, Eufiso of Iasi, Romania (the "First Respondent") / Zipp Software of Iasi, Romania (the "Second Respondent").
The disputed domain names <facebookcams.co>, <facebooklivecams.com> and <facebooklive.co> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. On April 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on April 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2016. .
The Second Respondent submitted informal communication on April 17, 2016. No formal Response was submitted. Accordingly, the Center notified the parties of the commencement of the Panel Appointment Process on May 9, 2016.
The Center appointed Knud Wallberg as the sole panelist in this matter on May 23, 2016. 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 leading provider of online social networking services. Since its launch in 2004 the Complainant has developed considerable reputation and goodwill worldwide in its FACEBOOK trademark, which is also registered worldwide including in the European Union and inter alia registered on January 10, 2006 with the United States Patent and Trademark Office ("USPTO").
The Complainant owns numerous domain names consisting of or including the term "facebook", such as <facebook.com> and <facebooklive.com>.
The Complainant's website contains a feature called "Facebook Live" which allows users to broadcast live videos on their mobile devices via an application.
The disputed domain names <facebooklive.co> and <facebookcams.co> were registered on February 8, 2011 by the First Respondent and the disputed domain name <facebooklivecams.com>
on January 28, 2012 by the Second Respondent. At the time the Complaint was filed, the disputed domain names resolved to websites containing pornographic or sexually explicit content.
The Complainant contends:
(i) that the disputed domain names are confusingly similar to the FACEBOOK trademark in which it has rights. The disputed domain names incorporate the FACEBOOK trademark in its entirety and differ from the trademark only by the addition of the generic terms "live", "cams" and "livecams" respectively;
(ii) that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not licensees of the Complainant nor have they been authorized or allowed by the Complainant to make any use of its FACEBOOK trademark;
(iii) that the disputed domain names were registered and are being used in bad faith. It would be inconceivable for the Respondents to argue that they did not have knowledge of the Complainant's FACEBOOK trademark at the time the disputed domain names were registered. The disputed domain names are being used for almost identical websites displaying pornographic content or sexually-explicit images and are clearly commercial in nature given that Internet users are required to pay in order to become members and access the content streamed live via the websites;
(iv) that the Respondents appear to be cybersquatters who have registered a considerable number of domain names infringing third party trademarks that are also resolving to similar websites displaying pornographic content.
The Complainant further states that the criteria for consolidating the Complaint against the two identified Respondents are met for the following reasons:
It is clear that the disputed domain names are under common control by the First and Second Respondents as shown by the fact that the First and Second Respondents have the same contact details, that the disputed domain names resolve to almost identical websites displaying pornographic content, thatthe disputed domain names share a similar structure consisting of the Complainant's FACEBOOK trademark with the terms "live" and/or "cams", either by themselves or jointly and that the disputed domain names are registered with the same registrar.
Further, it is argued that consolidation would be fair and equitable to all parties. There is no apparent reason why it would not be equitable to allow the Complainant to file a single Complaint against the First and Second Respondents, as the Complainant's substantive arguments against the First and Second Respondents are the same, the present dispute involves a small number of domain names and the relevant filings, including annexes, are not unreasonably voluminous.
The Respondents did not formally reply to the Complainant's contentions.
However, on April 17, 2016, a person called "Alexandru Gurita" sent an email to the Center using the email address "['Respondent 2']@gmail.com" in which he stated the following: "I wasn't aware there are domains that breach any copyright. All dmains will be deleted / transferred accordingly. Please let me know what is the easiest way to do it."
6.1. Preliminary Issues: Consolidation and Respondents' Agreement to Requested Remedy
Initially, the Panel shall consider two matters namely whether to allow the Complainant to consolidate the Complaint and whether the Respondents' expressed willingness to delete or transfer the disputed domain names precludes the Panel from reviewing the facts of the case.
On the matter of consolidation, neither the Policy nor the Rules specifically govern this question. However, UDRP panels have articulated criteria that addresses the question, which are summarized in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"): "These criteria encompass situations in which […] (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."
The Panel finds that these latter criteria are met in the present case. In addition to the reasons put forward by the Complainant as referenced above in section 5.A, the Panel further notes that the email quoted above in section 5.B must be construed as encompassing all the three disputed domain names. In other words: the Respondents have reacted to the filed Complaint as if the disputed domain names and corresponding websites are indeed under common control. The Panel further notes that the Policy applies unchanged also to domain names registered under the country code Top-Level Domain ("ccTLD") ".co" and thus applies uniformly to all three disputed domain names. This means that the Panel can review the case in a uniform way that is fair and equitable to all parties.
As far as the Respondents' statement in the email, in which they indicated their willingness to transfer the disputed domain names, is concerned, the Complainant stated the following in an email of April 18, 2016: "For the sake of completeness please note that the Complainant does not wish to suspend these proceedings. The Complainant sent a cease and desist letter to the Respondent (as set out in paragraphs 35 and 36 of the Complaint) and this was ignored. Thus the Complainant had no choice but to file these proceedings and has therefore been put to considerable inconvenience and expense as a result of the Respondent's actions. As a result, the Complainant now wishes to obtain a full decision."
In such cases a UDRP panel has different possible courses to follow, as outlined in paragraph 4.13 of the WIPO Overview 2.0. In the present case the Respondents reply that they were not "aware there are domains that breach any copyright" is ambiguous and does clearly not assent to the claims put forward in the Complaint that the registration of the disputed domain name was done in bad faith as stipulated in paragraph 4(a) of the Policy. Under such circumstances the Panel agrees with the panel in Research In Motion Limited v. Privacy Locked LLC / Nat Collicot, WIPO Case No. D2009-0320, that the Panel must satisfy itself that the three elements of Paragraph 4(a) of the Policy are in fact present before granting the requested remedy. Considering all the circumstances of the present case, the Panel will therefore proceed to review the facts of the case and subsequently make a decision on the merits.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that the disputed domain names <facebookcams.co>, <facebooklive.co> and <facebooklivecams.com> are confusingly similar (in the sense of the Policy) to the Complainant's registered trademark FACEBOOK because they contain the mark in its entirety with the addition of the generic terms "cams", "live" and "livecams", respectively, which refer to a feature offered by the Complainant. Neither the country code Top-Level Domain ".co" nor the generic Top-Level Domain ".com" dispels a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to all the disputed domain names.
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondents to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. Further, the way that the Respondents are using the disputed domain names, as described above, likely precludes any possible finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose 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 that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the extent of use of the Complainant's trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondents registered the disputed domain names without prior knowledge of the Complainant and the Complainant's mark. Further, the Panel finds that the Respondents could not have been unaware of the fact that they chose domain names which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The Respondents are using the disputed domain names actively for almost identical websites displaying pornographic content or sexually-explicit images and based on the provided copies of the Terms and Conditions for using the websites said use is commercial in nature. By doing so the Panel finds that the Respondents intentionally attempt to attract, for commercial gain, Internet users to their websites, by creating a likelihood of confusion with the Complainant's mark and that the disputed domain names are thus used in bad faith.
The Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b)(iv) of the Policy are also fulfilled in this case.
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 <facebookcams.co>, <facebooklivecams.com>, <facebooklive.co> be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: June 10, 2016