The Complainant is Meta Platforms, Inc., United States of America (“United States”) (hereinafter, “Complainant”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, Yep Solutions, Inc., United States (“hereinafter, “Respondent”.)
The disputed domain names <fãcebook.com> (<xn--fcebook-xwa.com>), <facêbook.net> (<xn--facbook-lya.net>), <facëbook.net> (<xn--facbook-tya.net>), <fácebook.net> (<xn--fcebook-hwa.net>), <fàcebook.net> (<xn--fcebook-8va.net>), <fâcebook.net> (<xn--fcebook-pwa.net>), and <fäcebook.net> (<xn--fcebook-5wa.net>) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 15, 2022, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Response was filed with the Center on December 31, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 24, 2022. 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.
Complainant is a social technology company which, among other things, operates Facebook, Instagram, and WhatsApp. Complainant’s aim is to help people connect, find communities, and grow businesses. Complainant was founded in 2004 as “Facebook,” which provides online social-media and social-networking services. Originally restricted to students at Harvard University, located in Cambridge, Massachusetts, United States, it quickly expanded to other universities, and in 2006 to anyone in the world with a valid email address. Its business rapidly expanded to 1 million active users by the end of 2004 to 2.27 billion users as of September 2018 (Complaint, Annexes 6 and 7).
Complainant’s Facebook currently has 2.9 billion monthly active users and 1.91 daily active users on average worldwide. Its main website is currently ranked as the 4th most visited website in the world. Facebook provides social networking services in more than 70 languages. Complainant’s FACEBOOK trademark is currently ranked 15th in Interbrand’s Best Global Brands report (Complaint, Annexes 7 and 8). Complainant has 13.6 million followers on Twitter (Complaint, Annex 9).
Complainant has registered numerous trademarks of its famous FACEBOOK trademark, including with the United States Patent and Trademark Office (USPTO), registered on January 10, 2006; with the European Union on April 29, 2008; and an International trademark registration on December 15, 2014 (Complaint, Annex 10).
Respondent has registered the disputed domain names as internationalized domain names using Punycode translations. It has been established in UDRP decisions that internationalized domain names (IDNs) and their Punycode translations are equivalents (See, e.g., Facebook, Inc. v. Registration Private, Domains By Proxy LLC/ Serhii Pronin, WIPO Case No. D2020-0172, and Complaint, Annex 14). Some of the disputed domain names point to a parking page displaying pay-per-click (“PPC”) links and others have never been substantively used (Complaint, Annexes 11 and 12). The disputed domain names were registered on February 25, 2018 (Complaint, Annex 2).
Complainant asserts that the disputed domain names are confusingly similar to its FACEBOOK trademark. Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant contends that the disputed domain names have been registered and are being used in bad faith.
Respondent failed to respond to the Complaint.
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain names all include Complainant’s famous FACEBOOK trademark rendered in Punycode. Panels have long held that Punycode translations are actionable as identical or confusingly similar in that such translations are familiar to many Internet users and are nothing but an attempt to escape a finding of confusing similarities (Complaint, Annexes 11, 12, and 14). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s famous trademark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent registered the disputed domain names all of which include the Punycode translation of Complainant’s famous trademark in the hope that it could avoid a finding that the disputed domain names were registered and are being used in bad faith. Such an attempt must fail, as many previous UDRP decisions have found. Respondent is using the disputed domain names to resolve to a web site which contains sponsored links. This is clearly an attempt to profit from the confusion created by the domain names having been registered in Punycode. Some of the disputed domain names also resolve to inactive webpages which does not prevent a finding of bad faith. Accordingly, the Panel finds 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 <fãcebook.com> (<xn--fcebook-xwa.com>), <facêbook.net> (<xn--facbook-lya.net>), <facëbook.net> (<xn--facbook-tya.net>), <fácebook.net> (<xn--fcebook-hwa.net>), <fàcebook.net> (<xn--fcebook-8va.net>), <fâcebook.net> (<xn--fcebook-pwa.net>), and <fäcebook.net> (<xn--fcebook-5wa.net>), be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Date: January 31, 2022