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 names <workpalce.com>, <workplac.com> and <workplacefacebook.com> are registered with DNSPod, Inc. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2021 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 in English on April 23, 2021.
On April 19, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 19, 2021, the Complainant confirmed its request that English be the language of the proceeding. On April 20, 2021, the Respondent transmitted an email to the Center requesting that Chinese be 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 in English and Chinese of the Complaint, and the proceeding commenced on May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. On May 28, 2021, the Center informed the Parties that it would proceed to appoint a panel.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 10, 2021. 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 Complainant’s “www.facebook.com” website is currently ranked 7th in the world.
The Complainant launched its paid collaborative tool called WORKPLACE on October 10, 2016. Over 30,000 companies spanning multiple industries use WORKPLACE worldwide.
The Complainant is the owner of numerous registrations in jurisdictions worldwide for its FACEBOOK and WORKPLACE BY FACEBOOK trade marks (the “Trade Mark(s)”), including:
(i) Chinese registration No.5251162 for the Trade Mark FACEBOOK, registered on September 21, 2009; US registration No. 3041791 for the Trade Mark FACEBOOK, registered on January 10, 2006; and International registration No. 1075094 for the Trade Mark FACEBOOK, registered on July 16, 2010;
(ii) Chinese registration No. 37043796 for the Trade Mark WORKPLACE BY FACEBOOK, registered on January 14, 2020 (with a filing date of March 25, 2019); and European Union registration No. 016559999 for the Trade Mark WORKPLACE BY FACEBOOK, registered on August 2, 2017 (with a filing date of April 6, 2017).
The Complainant is the owner of numerous domain names comprising the Trade Marks, including <facebook.com>, <workplace.com> and <facebook.cn>.
The Complainant’s websites are inaccessible in mainland China, but the Complainant and its Trade Marks have received widespread coverage in Chinese press (including in 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 Complainant’s trade marks and third party trade marks; and the Respondent has been named in at least six UDRP proceedings, where he was ordered to transfer all of the disputed domain names under complaint.
The disputed domain names were all registered on the same date, October 10, 2016.
The disputed domain names are resolved to websites providing sponsored links to third party websites, some of which offer similar goods and services to those offered by the Complainant under the Trade Marks, and containing an offer to sell the disputed domain names in question (the “Websites”).
The Complainant contends that the disputed domain names are confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are 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 names 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:
(i) The disputed domain names consist of Latin characters, comprising English terms;
(ii) The Websites are in the English language;
(iii) In previous UDRP proceedings involving the same Respondent, UDRP panels determined that English be the language of the proceedings; and
(iv) To require the Complainant to translate and submit the Complaint in Chinese would be disproportionate and would result in additional expense and unnecessary delay.
The Respondent requested that Chinese be the language of the proceeding, as he is a Chinese citizen. The Respondent did not however file any response in this 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.
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 Marks acquired through use and registration.
Although the disputed domain names were registered before the Complainant’s applications for registration of its WORKPLACE BY FACEBOOK mark proceeded to registration (and on the launch date of WORKPLACE BY FACEBOOK), this is immaterial for the purposes of the first limb under paragraph 4(a) – see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3:
“The fact that a domain name may have been registered before a complainant has acquired trade mark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.”
The disputed domain names <workpalce.com> and <workplac.com> consist of common, obvious, or intentional misspellings of WORKPLACE, being a dominant feature of the Complainant’s WORKPLACE BY FACEBOOK Trade Mark (see WIPO Overview 3.0, sections 1.7 and 1.9).
The disputed domain name <workplacefacebook.com> incorporates the entirety of the Complainant’s FACEBOOK Trade Mark; and it contains a dominant feature of the Complainant’s WORKPLACE BY FACEBOOK Trade Mark.
In addition, the fact that there are multiple disputed domain names targeting the Complainant’s Trade Mark (all the disputed domain names were registered on the same date, with a similar use), and that one of the disputed domain names is almost identical to the Complainant’s WORKPLACE BY FACEBOOK Trade Mark further supports the confusing similarity of all the disputed domain names.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks.
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 names or to use the Trade Marks. 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 names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he/she has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in connection with the Websites, to obtain pay-per-click revenue via sponsored links, including to websites providing goods or services similar to those provided by the Complainant under the Trade Marks; and they have also been offered for sale via the Websites. Furthermore, it appears to be no coincidence that the disputed domain names were each registered on the official launch date of WORKPLACE BY FACEBOOK.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In addition, the Panel notes the nature of the disputed domain name <workplacefacebook.com>, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Although the disputed domain names were registered before the Complainant obtained registration of its (at that time) pending applications for registration of the WORKPLACE BY FACEBOOK trade mark, in all the circumstances, the Panel finds the facts of this case demonstrate that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent (as yet unregistered) rights in respect of its WORKPLACE BY FACEBOOK trade mark (see WIPO Overview 3.0, section 3.8.2).
In light of the manner of the use of the disputed domain names, and the offer to sell the disputed domain names highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out under paragraphs 4(b)(iv) and 4(b)(i) of the Policy.
In light also of the Respondent having engaged in a pattern of conduct of registering domain names comprising the Complainant’s Trade Marks and other third party trade marks in order to prevent the relevant trade mark owners from reflecting their marks in corresponding domain names (see, for example, Rakuten, Inc. v. 林宗兴 (Lin Zong Xing), WIPO Case No. D2020-2846; Alibaba Group Holding Limited 诉 林宗兴 （Lin Zong Xing）,案件编号： WIPO Case No. D2019-2855; and Facebook Inc. v. 林宗兴 (Lin Zong Xing), WIPO Case No. D2019-2492), the Panel finds that bad faith has also been made out under paragraph 4(b)(ii) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are 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 names <workpalce.com>, <workplac.com> and <workplacefacebook.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 24, 2021