of July 16, 2010 in classes 9, 35, 36, 38, 41, 42 and 45, duly renewed in 2020 and protected among others in Republic of Korea, Japan, China, Australia; andThe Complainant is Meta Platforms, Inc., United States of America, represented by Tucker Ellis, LLP, United States of America.
The Respondent is Dont know, India.
The disputed domain name <advancedfacebookads.com> is registered with BigRock Solutions Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2021.
The Center appointed Fabrice Bircker as the sole panelist in this matter on December 30, 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, Meta Platforms, Inc., operates the Facebook social networking website (which is notably available through the <facebook.com> domain name) and mobile application.
The Facebook social network has been created in 2004. Nowadays, it has more than one billion daily active accounts and over two billion monthly active users from all over the world. This traffic makes “www.facebook.com” the seventh most visited website in the world.
The Complainant’s users can “Like” posts on Facebook by selecting the “Like” button icon associated with a post. In addition, the Complainant also provides “paid likes” for Facebook pages, which are counted as paid if they occur within certain periods of time.
The Complainant’s activities are notably protected through the following trademark registrations:
- United States trademark registration No. 3881770 for FACEBOOK in classes 35, 38, 41, 42, and 45, with first use in February 2004, filed on June 29, 2010, registered on November 23, 2010, and regularly renewed in 2021;
- International trademark registration No. 1075094 for of July 16, 2010 in classes 9, 35, 36, 38, 41, 42 and 45, duly renewed in 2020 and protected among others in Republic of Korea, Japan, China, Australia; and
- European Union Trade Mark registration No. 9776618 for FACEBOOK in classes 9, 16, 35 and 36, filed on March 1, 2011, registered on November 2, 2011, and regularly renewed in 2021.
The disputed domain name, <advancedfacebookads.com>, was registered on June 25, 2021.
At the time of the decision, the disputed domain name does not resolve to any active website. However, according to the record of the case, it previously redirected to a website purporting to sell Facebook “Likes” intended to enhance the exposure on the Facebook social media.
The main arguments of the Complainant can be summarized as follows:
The Complainant contends that the disputed domain name is confusingly similar to its FACEBOOK trademark, as it fully reproduces it by merely adding the words “advanced” and “ads” and the generic Top-Level Domain (gTLD) “.com”, which are not sufficient to distinguish said disputed domain name from the invoked trademark.
The Complainant claims that it has not licensed nor authorized the Respondent to use its FACEBOOK trademark and that it has no legal relationship with the Respondent that would entitle the latter to use the FACEBOOK trademark.
The Complainant also puts forward that the Respondent is not known by the disputed domain name.
In addition, the Complainant contends that the Respondent is not using the disputed domain name in relation with a bona fide offering of goods or services because the content of the website to which it redirects conducts the Internet users to believe that an affiliation exists between its website and the FACEBOOK trademark, whereas this is actually not the case.
The Complainant adds that the use of the disputed domain name and of its FACEBOOK trademark on the related website is also contrary to its terms of service.
At last, the Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it is used to sell “Likes”, which is a commercial use. In addition, according to the Complainant, the Respondent’s commercial objective is achieved by both misleadingly diverting consumers searching for the Complainant, and by using the Complainant’s FACEBOOK trademark and “Like” button icon to entice these consumers to engage in fraudulent activity on the FACEBOOK social media.
The Complainant notably contends that the Respondent was necessarily aware of its FACEBOOK trademark because the website to which the disputed domain name redirects displays said trademark and a derivation of the Complainant’s “Like” button icon in connection with an activity consisting in selling “Likes” on the Facebook social media.
In addition, the Complainant’s puts forward in substance that the disputed domain name is used to create, for commercial gain, a likelihood of confusion with the FACEBOOK trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Taking the foregoing provisions into consideration the Panel finds as follows.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.
It results from the documents supporting the Complaint, and in particular from Annexes 13 and 14, that the Complainant is the owner of trademark registrations for FACEBOOK, notably those detailed in section 4 above.
Turning to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, as indicated in WIPO Overview 3.0, section 1.7, “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark (…), the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
This test is satisfied here, as the disputed domain name, <advancedfacebookads.com>, identically reproduces the FACEBOOK trademark in its entirety, and because the added elements, namely “advanced” and “ads”, do not prevent the Complainant’s trademark to remain recognizable. Indeed, there is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview 3.0, section 1.8; or Kabbage, Inc. v. Name Redacted, WIPO Case No. D2020-0140). Besides, the gTLD “.com” may be ignored for the purpose of assessing the confusing similarity, because it only plays a technical function.
Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant contends that it has not given its consent for the Respondent to use its FACEBOOK trademark in a domain name registration or in any other manner.
Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.
Furthermore, the disputed domain name is currently no longer used.
Before being deactivated, the disputed domain name redirected to a website purporting to sell Facebook “Likes” intended to enhance the exposure on the Facebook social media, whereas such business is forbidden by the policy of the Complainant’s social media. Consequently, this commercial use was illegitimate and therefore cannot be considered as a bona fide offering of services.
In addition, the nature of the disputed domain name, insofar as it consists of the well-known FACEBOOK trademark (cf. paragraph C. infra) plus the additional terms “advanced” and “ads”, and its use in relation with a website displaying the FACEBOOK trademark and an icon imitating the “Like” icon button of the Complainant, carries a risk that Internet users believe that the Respondent is affiliated with the Complainant (see WIPO Overview 3.0, section 2.5.1), whereas this is not the case.
In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The burden of production now shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name.
The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
Taking all the above into consideration, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.
Given the globally well-known feature of the FACEBOOK trademark (the eponymous website counts among the most visited in the world and said trademark is ranked 15th in the 2021 Interbrand report of the most valuable brands in the world), it is not conceivable that the Respondent has registered the disputed domain name without having the Complainant’s rights in mind.
It is more certain that the Respondent targeted the Complainant’s trademark at the time of the registration of the disputed domain name that the website to which it initially redirected proposed to buy “Likes” on the Facebook social media.
Additionally, the Panel finds that the identity and contact details provided by the Respondent when registering the disputed domain name are obviously inaccurate, what is further evidence of bad faith registration (see WIPO Overview 3.0, section 3.6),
Before being deactivated, the disputed domain name redirected to a website purporting offering to buy “Likes” on the Facebook social media, whereas such an activity is prohibited by its terms of services.
As a consequence, the disputed domain name was used in relation with an illicit business infringing upon the Complainant’s rights.
Besides, as mentioned in section 6.B supra, the conditions of use of the disputed domain name could falsely suggest that the Respondent was somewhere affiliated with the Complainant.
Such use was deceptive and illegal, and therefore made in bad faith. Indeed, it is consistently held that the use of a domain name for illegitimate activity is considered as manifest evidence of bad faith (see WIPO Overview 3.0, sections 3.1.4).
At last, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith, not only because this deactivation seems purely opportunistic, but also because the present situation clearly falls within the doctrine of passive holding.
Indeed, all the relevant factors for applying the passive holding doctrine are met here: (i) the Complainant’s mark counts among the most well-known trademarks in the world, (ii) the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s used false identity and contact details when registering the disputed domain name, and (iv) the disputed domain, which incorporates in its entirety the Complainant’s trademark, carries a risk of affiliation with the latter, while the Respondent is not authorized to use the FACEBOOK trademark of any manner.
In these conditions, any good faith use of said disputed domain name by the Respondent seems implausible (See WIPO Overview 3.0, section 3.3).
In conclusion, for all the reasons set out above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of 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, <advancedfacebookads.com>, be transferred to the Complainant.
Fabrice Bircker
Sole Panelist
Date: January 13, 2022