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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Philip DiWeston

Case No. D2019-2644

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Philip DiWeston, Canada.

2. The Domain Name and Registrar

The disputed domain name <auth-facebook.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 30, 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 31, 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 November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on November 26, 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 a leading online social networking service, which was founded in 2004. It has more than 1 billion users worldwide.

The Complainant is the owner of the trademark FACEBOOK, which is registered in many jurisdictions worldwide, e.g., United States Trademark Registration No. 3,122,052, registered on July 25, 2006 (cf. Annex 9 to the Complaint).

The Complainant further owns and operates a large number of domain names like <facebook.com>.

The disputed domain name was created on November 29, 2018.

The Respondent is composed of a domain name privacy registration service and an individual from Canada (both of them jointly referred to as the “Respondent” in the following decision).

At the time of the Decision, the disputed domain name was not active. However, the disputed domain name has email exchanger records attached to it, indicating that it is able to be used for email correspondence (cf. Annex 8 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark.

The Complainant argues that the mere difference between the disputed domain name and the Complainant’s trademark is the addition of the abbreviation “auth”, likely standing for “authentication”. The Complainant is of the opinion that this difference does not negate the confusing similarity with its trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the FACEBOOK trademark in connection with a bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the wide recognition of the FACEBOOK trademark, the Respondent was or should have been aware of the trademark when registering and using the disputed domain name.

B. Respondent

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

6. Discussion and Findings

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.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark FACEBOOK by virtue of a large number of trademark registrations worldwide.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it fully incorporates the mark FACEBOOK. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other letters or terms do not prevent a finding of confusing similarity. The mere addition of the abbreviation “auth” plus hyphen does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s FACEBOOK trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s FACEBOOK trademark in a confusingly similar way within the disputed domain name.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In this regard, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

In addition, the Panel notes the composition of the disputed domain name, which carries a significant risk of implied affiliation or endorsement.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel believes that the Respondent deliberately attempted to freeride on the goodwill of the Complainant’s FACEBOOK trademark, for illegitimate commercial gain and/or to disrupt the Complainant’s business.

In this regard, the Panel notes the reputation of the Complainant’s trademark FACEBOOK. The Panel is convinced that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.

Furthermore, the fact that the Respondent has email exchanger records attached to the disputed domain name indicates, in view of the Panel, that the Respondent at least has considered to use the confusingly similar disputed domain name for email correspondence (cf. Annex 8 to the Complaint).

Additionally, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 <auth-facebook.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: December 10, 2019

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