The Complainant is Facebook, Inc., United States of America, represented by Tucker Ellis, LLP, United States of America.
The Respondent is Mehmet HarbalI, Turkey.
The disputed domain name <facebooksecurecheck.com> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2021, 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 November 1, 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 on November 3, 2021.
The Center sent an email communication in English and Turkish to the parties on November 1, 2021, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Turkish. The Complainant sent an email to the Center requesting English to be the language of the proceeding on November 3, 2021. 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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. On November 1 and 23, 2021, and December 3, 2021, the Respondent sent email communications in English to the Center but did not submit any formal response. On December 3, 2021, the Center informed the Parties that it will proceed to panel appointment.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 9, 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 leading online social networking service, which was founded in 2004.
The Complainant is the owner of the famous trademark FACEBOOK, which is registered and used around the world. The Complainant is the owner of many trademark registrations worldwide, e.g., United States Trademark Registration No. 3122052 (registered on July 25, 2006), and European Union Trademark Registration No. 009776618 (registered on November 2, 2011), (Annexes 10 and 11 to the Complaint).
The Complainant further owns and operates a large number of domain names like <facebook.org> and <facebook.net>.
The disputed domain name was registered on October 30, 2017.
The Respondent is located in Turkey based on the information disclosed by the Registrar.
Apparently, the disputed domain name has not been actively used since its registration. It currently does not resolve to an active website (Annex 12 to the Complaint).
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, as it fully incorporates the Complainant’s 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 it has never granted a permission or license to the Respondent to use its trademark. The Complainant further states that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Finally, it is argued that, given the circumstances of the case, the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
However, on November 1 and 23, as well as on December 3, 2021, the Center received informal email communications in English from the Respondent. In its email communications, the Respondent indicated that it will not challenge this case and is willing to “drop” the disputed domain name. The Respondent indicated that it is ready to cooperate, but informed the Center that it did not manage to have the disputed domain name registration deleted. An explicit consent for a transfer of the disputed domain name to the Complainant was not indicated in its email communications to the Center.
The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English.
Although the language of the registration agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint, while the Respondent has failed to raise any objection or even to respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel notes that the Respondent was given the opportunity to respond in Turkish and that this opportunity remained unused by the Respondent. In addition, the Panel notes that the Respondent’s email communications to the Center were sent in English language, which indicates that the Respondent is able to read, write, and communicate in English.
Consequently, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English.
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.
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 addition of other terms does not prevent a finding of confusing similarity. The mere addition of the terms “secure” and “check”, 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.
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, particularly as the disputed domain name has not been actively used since its registration on October 30, 2017. 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 risk of implied affiliation or endorsement, see section 2.5.1 of the WIPO Overview 3.0.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel is convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name in October 2017. At the date of registration of the disputed domain name, the Complainant’s FACEBOOK trademark was already registered, widely used, and well known for many years. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
With respect to use of the disputed domain name in bad faith, as already indicated before, the disputed domain name has apparently yet not been linked to an active website. Nonetheless, and in line with the previous UDRP decisions (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith.
Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s FACEBOOK trademark as sufficiently distinctive and even well-known (including in Turkey, where the Respondent is located), so that a descriptive use of the Complainant’s trademark within the disputed domain name is not conceivable. Moreover, the Respondent actively engaged a privacy service to mask its identity.
Furthermore, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use. This is supported by the fact that the Respondent communicated to the Center that it will not challenge the Complainant’s contentions within this administrative proceeding, thereby failing to provide any good faith explanation as to its registration and passive holding of the confusingly similar disputed domain name.
Taking all circumstances of this case into consideration, the Panel concludes that in the present case the passive holding of the disputed domain name sufficiently indicates bad faith use by the Respondent.
Consequently, the Panel is finds that 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.
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 <facebooksecurecheck.com> be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: December 22, 2021