WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Laura Yun, Offshore Hosting Solutions Ltd.

Case No. D2019-1288

1. The Parties

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

The Respondent is Laura Yun, Offshore Hosting Solutions Ltd., Seychelles.

2. The Domain Names and Registrar

The disputed domain names <facebooktoken.org> and <ico-facebook.org> are registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 11, 2019, 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 June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2019.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on July 12, 2019. 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 the world’s leading provider of online social networking services. Founded in 2004, it allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”.

As of today, the Complainant has more than 2.32 billion monthly active users and 1.47 billion daily active users on average worldwide. Its main website is currently ranked as the 3rd most visited website both in the world and in the Seychelles (where the Respondent is located) according to information company Alexa.

The network services offered by the Complainant are also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market, with 1.74 billion mobile monthly active users and 1.15 billion mobile daily active users. It is the most downloaded application in the world as per App Annie’s Top Apps Ranking in 2019.

The Complainant has secured ownership of numerous trademark registrations consisting of FACEBOOK in many jurisdictions throughout the world, such as:

- United States trademark No. 3041791, registered on January 10, 2006 (first use in commerce in 2004) (class 38);

- United States trademark No. 3122052, registered on July 25, 2006 (first use in commerce in 2004) (class 38);

- European Union trademark No. 004535381, registered on June 22, 2011 (classes 35 and 38).

The Complainant further owns numerous domain names consisting of its FACEBOOK trademark, for instance, <facebook.com>, <facebook.org>, and <facebook.biz>, as well as under country extensions such as <facebook.com.tr> (Turkey), <facebook.be> (Belgium), <facebook.cn> (China), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.in> (India), <facebook.hu> (Hungary), <facebook.it> (Italy), <facebook.pk> (Pakistan), <facebook.es> (Spain), <facebook.us> (United States), <facebook.ca> (Canada), <facebook.mx> (Mexico), <facebook.com.ar> (Argentina), <facebook.com.br> (Brazil), <facebook.co> (Colombia) and <facebook.ua> (Ukraine).

The Complainant’s trademark FACEBOOK has been held by prior UDRP panels as enjoying a widespread reputation and a high degree of recognition.

On June 11, 2018, the Respondent registered both <facebooktoken.org> and <ico-facebook.org>. While <ico-facebook.org> has never been actively used by the Respondent, <facebooktoken.org> has been connected in the past to a website which prominently displayed Facebook’s logo on its homepage with the following title:

"The future is now – FACEBOOK TOKEN – FACEBOOK ICO!

FACEBOOK present FACEBOOK, the representative cryptocurrency of the FACEBOOK Blockchain."

The website also contained various inoperative links, such as the link “View Whitepaper” appearing alongside the above-mentioned title and the links to the “Terms of Service” and to the “Privacy Policy” displayed at the bottom of the screen. In particular, the website invited Facebook users to sign up to a “pre-sale with a [USD] 25 Minimum (45% Token Bonus)" by providing their personal information (e.g. user name and email address).

The Respondent also previously registered other domain names infringing upon the Complainant’s or third party’s trademarks, such as <facebookcracker.com>, <craiglislt.org>, <paypai.org>, <paypal-pay.info>, and <paypaypal.net>. The Respondent has also been involved in several previous UDRP proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to its FACEBOOK trademarks as they entirely incorporate such trademark and that the additional elements, namely “token” and “ico” do not prevent a finding of confusing similarity under the first element.

The Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not known under that name, is not a licensee of the Complainant, nor has it been otherwise authorized or allowed by the Complainant to make any use of its FACEBOOK trademark in any way.

Far from being used in connection with a bona fide offering of goods or services, the domain name <facebooktoken.org> was previously used by the Respondent to resolve to a website featuring the Complainant’s logo, where Facebook users were asked to sign up to a purported pre-sale of Facebook cryptocurrency by providing their personal information, such as user name and email address. It is therefore clear that this disputed domain name was being used in connection with a phishing scheme that sought to illegitimately collect the personal information of Facebook users, obviously for commercial gain. As to the domain name <ico-facebook.org>, the Complainant further adds that its passive holding cannot be considered as a bona fide offering of goods or services either.

The Complainant finally affirms that, considering the fame of its FACEBOOK trademark, the Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain names, as further evidenced by the display of the Complainant’s logo on the website attached to the domain name <facebooktoken.org>.

Furthermore, the Complainant considers that the use of the disputed domain names as described above amounts to a use in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant holds numerous word trademarks throughout the world consisting of FACEBOOK, whose well-known character is undoubtful.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000‑0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002‑0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007‑1629). Such happens to be the case here.

This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.

Such happens to be the case. The applicable generic Top-Level Domain (“gTLD”), in the present case “.org”, is usually disregarded under the confusing similarity test and the addition of a descriptive term such as “token” or “ico” does not prevent a finding of confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). This is all the more true than, considering the recent widely mediated intent of the Complainant to launch its own cryptocurrency, users are likely to believe that the disputed domain names are managed by the Complainant to provide information as to its cryptocurrency.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Complainant is the owner of numerous FACEBOOK trademarks. The Complainant has no business or other relationship with the Respondent. The Complainants thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

Absent any Response, there is no doubt in the Panel’s opinion that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith typically requires the Respondent to be aware of the Complainant’s trademarks. In the present case, the Complainant is the owner of numerous FACEBOOK trademarks, which enjoy a worldwide reputation. Considering the reputation of the Complainant’s trademarks, the Respondent was obviously aware of the Complainant’s trademarks at the time it registered the disputed domain names. As a result, the Panel holds that the disputed domain names were registered in bad faith.

Furthermore, the Respondent’s registration of a well-known trademark such as FACEBOOK may, in itself, be sufficient to consider that the domain name is being used in bad faith in certain circumstances (Comerica Inc. v. Horoshiy, Inc, WIPO Case No. D2004-0615).

Based upon the overall circumstances of the case, the Panel has no doubt that the disputed domain names were registered by the Respondent to exploit the Complainants’ goodwill with a phishing scheme that sought to illegitimately collect the personal information of Facebook users, obviously for commercial gain. Previous UDRP panels deciding under similar circumstances have held that the respondent's deceptive intent to solicit personal information from Internet users by conveying the false impression that the request for information originated from the Complainant is sufficient to establish bad faith, whether or not for commercial gain (see Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736).

Furthermore, considering the fame of the Complainant’s trademark, the Panel cannot imagine any plausible reason that would amount to a use of the disputed domain names in good faith.

The Panel finds, for the reasons discussed, that the Complainant has successfully established the third element under paragraph 4(a) of the Policy.

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 <facebooktoken.org> and <ico-facebook.org> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Date: July 15, 2019