The Complainant is Facebook Inc., United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 林宗兴 (Lin Zong Xing), China.
The disputed domain name <facebookrealitylabs.com> is registered with DNSPod, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 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 October 14, 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 October 18, 2019.
On October 14, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 14, 2019. The Respondent did not comment on the language of the proceeding.
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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent sent an email to the Center on October 18, 2019 but did not file any substantive response. The Center notified the Commencement of Panel Appointment Process on November 15, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 25, 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.
The Complainant is a company founded in the US in 2004, and one of the world’s leading providers of online social networking services, under the trade mark FACEBOOK (the “Trade Mark”). The Complainant has more than 2.32 billion monthly active users and 1.47 billion daily active users on average worldwide. Its main website “www.facebook.com” is currently ranked as the 7th most visited website in the world.
The Complainant is the owner of numerous registrations worldwide for the Trade Mark, including Chinese registration No. 6389501, registered on March 28, 2010; US registration No. 3041791, registered on January 10, 2006; and European Union registration No. 004535381, registered on June 22, 2011.
The Complainant’s website is inaccessible in mainland China, but the Complainant and its Trade Mark have received widespread coverage in Chinese press (including China’s state media People’s Daily).
The Respondent is apparently an individual resident in China.
According to the uncontested evidence submitted by the Complainant, the Respondent has previously registered a large number of domain names comprising the Trade Mark and third party trade marks; and the Respondent has been named in at least three UDRP proceedings, where he or she was ordered to transfer all the disputed domain names under complaint.
The disputed domain name was registered on May 7, 2018. However, on October 18, 2019, the Center received an informal email communication from the Respondent, asking for information about the Registrar.
The disputed domain name was previously resolved to an English language website with sponsored links. It is currently resolved to an English and Chinese language website, offering the disputed domain name for sale for USD 22,222 (the “Website”).
The Complainant contends that the disputed domain name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden being placed on the parties and undue delay to the proceeding.
The Complainant made the following submissions in support of its language request:
(1) The disputed domain name consists of the Trade Mark together with the English language generic terms “reality” and “labs” in Latin script;
(2) The disputed domain name is currently redirecting to the Chinese and English language Website, which strongly suggests that the Respondent is capable of understanding the English language;
(3) The Complainant is a US corporation with English as its principal operational language; and
(4) To require the Complaint and Annexes to be translated into Chinese would only lead to delay and increased costs, running contrary to the aim of the Policy of providing timely and cost‐effective means of resolving domain name disputes.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language (in this regard the Panel notes also that the disputed domain name was previously resolved to an English language website with sponsored links).
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the words “reality” and “labs”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations 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; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services.
To the contrary, the disputed domain name has previously been resolved to a website with sponsored links, for commercial gain; and it is presently simply offered for sale via the Website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
In light of the manner of use by the Respondent of the disputed domain name, and also in light of the Respondent having engaged in a pattern of conduct of registering domain names comprising the Complainant’s Trade Mark and other third party trade marks in order to prevent the relevant trade mark owners from reflecting their marks in corresponding domain names, the Panel finds that bad faith has been made out under paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy.
The Panel also finds that the Respondent’s failure to provide complete contact information at the time of registration of the disputed domain name provides further support for a finding of bad faith.
The Panel also finds that, in light of the worldwide repute of the Trade Mark, and in light of the widespread media coverage obtained by the Complainant in mainland China, it is inconceivable that the Respondent was not aware of the Complainant and of its rights in the Trade Mark at the time of registration of the disputed domain name. Indeed, the Respondent’s subsequent decision to offer the disputed domain name for sale for USD 22,222 via the Website provides further, cogent evidence in support of this conclusion.
The Panel also agrees with the Complainant’s contention that, in light of the repute of the Trade Mark, and indeed on the evidence herein, there cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <facebookrealitylabs.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 2, 2019