WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Domain Admin, Whoisprotection.cc / Tony FBT

Case No. D2019-1672

1. The Parties

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

The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Tony FBT, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <fbtnews.com> (“Disputed Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 17, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019. The Respondent sent the first informal communication to the Center on July 21, 2019. The Complainant sent an email to the Center requesting to provide a copy of the Respondent’s communication to the Panel. The Respondent sent the second informal communication to the Center on July 23, 2019. The Respondent did not submit any formal response.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 20, 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, Facebook Inc., is a multinational information and technology company and provider of online social networking services. The Complainant is considered one of the world’s largest technology companies. The Complainant was founded in 2004 and currently employs almost 40,000 employees in almost 40 countries, including Malaysia, where the Respondent is located. The Complainant’s social media network, Facebook, has over 2 billion monthly active users worldwide.

The Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the mark FB, which it uses in connection with its social networking services. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:

- FB, European Union word mark registered with the European Union Intellectual Property Office (EUIPO) on August 23, 2011 under number 008981383 in class 45;

- FB, United States word mark registered with the United States Patent and Trademark Office (USPTO) on December 23, 2014 under number 4659777 in class 35; and

- FACEBOOK, Word mark registered with the Intellectual Property Corporation of Malaysia on January 6, 2010 under number 08005944 in class 38.

The Disputed Domain Name was registered by the Respondent on March 31, 2014. The Disputed Domain Name currently redirects to a social media page on the Complainant’s own website “www.facebook.com/MalaysiaNews.MY” providing reports on news and other current events in Malaysia and neighboring South-East Asian countries. Before the Complaint was filed, the Respondent used a profile picture on the social media page consisting of a white rectangle against a blue background reading “FACEBOOK NEWS | 新闻最前线 | WWW.FBTNEWS.COM”. After the initiation of the present proceedings, the Respondent amended this picture by deleting the reference to “FACEBOOK NEWS”. At a prior time before the Complaint was filed, the Disputed Domain Name redirected to another Facebook page of Respondent connected to the domain name <facebook.com/fb.top.news>.

Historical WhoIs records show that the Respondent had previously registered the domain names <fbtnet.net> and <fbtnetwork.com>. The registration of these domain names has expired.

On May 20, 2019, the Complainant sent a cease and desist letter to the Respondent providing notice of the Respondent’s alleged infringing use of the Disputed Domain Name and demanding the transfer of the Disputed Domain Name to the Complainant. The Respondent did not reply to this cease and desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use, as it deliberately creates confusion with the Complainant and redirects to a profile page on the Complainant’s own website used in violation of the Complainant’s Policies. Also, according to the Complainant, the Respondent is in no way affiliated with or authorized by the Complainant and the Respondent cannot legitimately claim to be commonly known by the Disputed Domain Name. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s trademark rights and sought to impersonate or create confusion with the Complainant and its business.

B. Respondent

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

The Respondent issued an informal communication to the Center in which the Respondent claimed that it does not maliciously use the Complainant’s trademark and that the Disputed Domain Name was registered as a convenient way to redirect to the Respondent’s own Facebook page. The Respondent continued by stating that it tried to change the name of its Facebook page, but was not successful and that, subsequent to being notified of the Complaint, the Respondent removed all references to Facebook on the page to which the Disputed Domain Name redirects.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are FB trademarks in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant’s social networking services.

The Disputed Domain Name is made up of the non-dictionary text “fbt”, which incorporates the Complainant’s FB trademark with the addition of the letter “t”, followed by the English word “news”.

Taking a holistic assessment of this case, noting in particular the content of the website under the disputed domain name, the Panel determines that the Complainant’s FB trademark is, on the whole, recognizable within the Disputed Domain Name so as to support a finding of confusing similarity. In this respect, the Panel notes that in specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel benefits from affirmation as to confusingly similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This may be of particular assistance in a somewhat unique case such as the present where the trademark consists of only a few characters plus an additional single character followed by a dictionary term. As the first element of the Policy serves to ascertain whether there is sufficient nexus to assess the principles captured in the second and third elements, a panel can take note in these specific instances of the overall facts and circumstances of the case to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name (See section 1.15 of the WIPO Overview 3.0).

In the present case, the Complainant has established that the Respondent has actively used the Disputed Domain Name to redirect to a Facebook profile page on the Complaint’s own website, has used a profile picture that included the sign “FACEBOOK NEWS” and has previously redirected the Disputed Domain Name to another Facebook profile page connected to the Uniform Resource Locator (“URL”) “www.facebook.com/fb.top.news”. The Respondent has therefore actively used the Disputed Domain Name to specifically refer to the Complainant’s FB and FACEBOOK trademarks. The Panel also determines that, in view of the URL to which the Disputed Domain Name referred, the letter “t” in the Disputed Domain Name likely stands for “top” and the Disputed Domain Name is therefore meant to represent “Facebook Top News” or “FB Top News”. This was advanced by the Complainant and has not been contradicted by the Respondent.

The Panel is of the opinion that, while the Complainant’s mark consists of two characters, it is ultimately recognizable within the Disputed Domain Name. The Respondent’s use of the Disputed Domain Name to specifically target the Complainant together with the incorporation of the Complainant’s FB trademark in the Disputed Domain Name moreover supports the Panel’s finding of confusingly similarity (see International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650; Zippo Manufacturing Company v. Domains by Proxy, LLC and Paul Campanella, WIPO Case No. D2014-0995).

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant's FB trademark.

B. Rights or Legitimate Interests

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.

As established by previous UDRP panels, 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 section 2.1 of the WIPO Overview 3.0 ).

The Complainant considers that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and services and that the Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. The Complainant considers that the Respondent’s use of the Disputed Domain Name to redirect to a profile page on the Complainant’s own website which includes a profile picture similar to the Complainant’s own logo and refers to “FACEBOOK NEWS” creates a false impression of association with the Complainant to misleadingly divert Internet users and thus cannot be considered a bona fide offering of services.

In an informal communication, the Respondent submits that the redirection of the Disputed Domain Name merely serves to guide Internet users to the Respondent’s own profile page, unrelated to the Complainant.

Although WhoIs records indicate that the Respondent has registered the Disputed Domain Name under the name “Tony FBT” and the Disputed Domain Name redirects to a Facebook profile page for “FBT News”, the Panel determines that there is no convincing evidence showing that the Respondent is indeed commonly known by the Disputed Domain Name. In light of the Panel’s finding under the first element of the Policy, the term “FBT News” likely stands for “FB Top News” of “Facebook Top News” and thus specifically refers to the Complainant. The Respondent does not show to legitimately hold rights to this term as a personal name, nickname, corporate name or other moniker apart from the Disputed Domain Name and corresponding Facebook page (see section 2.3 of the WIPO Overview 3.0).

The Respondent further does not demonstrate to have acquired any relevant trademark rights. The Respondent’s use and registration of the Disputed Domain Name were not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

First, the Panel finds that the use of the Disputed Domain Name, which redirects to a profile page on the Complainant’s own website and displays a similar logo to that of the Complainant in addition to using the term “Facebook News”, effectively suggests sponsorship or endorsement by the Complainant (see section 2.5 of WIPO Overview 3.0). Such a use of a domain name cannot be considered legitimate as it is likely to mislead Internet users as to source or sponsorship by the Complainant for commercial gain.

Second, the Respondent does not accurately and prominently disclose that it is not associated with the Complainant on the website/profile connected to the Disputed Domain Name. Instead, the Respondent effectively uses the FB and FACEBOOK trademarks to provide other services unrelated to the Complainant’s platform, thereby suggesting sponsorship or endorsement by the Complainant.

In view of the above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

The Respondent has incorporated the Complainant’s FB trademark in its entirety in the Disputed Domain Name and is using the Disputed Domain Name in connection to a profile page on the Complainant’s own website that refers to “Facebook News” or “Facebook Top News”. Accordingly, the Respondent makes express reference to the Complainant on the website/profile connected to the Disputed Domain Name. It is therefore inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

In the present case, the Panel is of the opinion that the Complainant’s trademark has a strong reputation and is widely known throughout the world, including Malaysia where the Respondent is residing. By prominently using the Complainant’s trademark on the website/profile connected to the Disputed Domain Name, the Respondent is effectively trading off the Complainant’s goodwill and reputation associated with the FB and FACEBOOK trademarks to promote its news reporting services. The Panel therefore finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to an online profile page, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website/profile.

Furthermore, the fact that in the present case the Respondent is redirecting the Disputed Domain Name to the Complainant’s own website may further establish bad faith considering that the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the Complainant (see section 3.1.4 of WIPO Overview 3.0).

Additionally, in the circumstances of this case, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct). The Panel also notes that the Respondent did not respond to the Complainant’s cease-and-desist letter. Therefore, the Panel considers that the inference of bad faith is strengthened, in light of the cumulative circumstances indicating bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the last element 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 Name <fbtnews.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: August 28, 2019