WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. He Wenming

Case No. DCC2013-0004

1. The Parties

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

The Respondent is He Wenming of Si Chuan, China.

2. The Domain Name and Registrar

The disputed domain name <facebook.cc> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2013. On December 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2014. On January 11, 2014, the Center received two informal email communications from the Respondent in English. The Respondent did not submit any formal Response. Accordingly, the Center notified the parties about the commencement of panel appointment process on January 31, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 6, 2014. 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, Facebook, Inc., is one of the world’s leading provider of online social networking services with more than a 1.11 billion registered users around the world. Since it was founded in February 2004, the Complainant Facebook has constantly grown and acquired notoriety. It has a global presence as well as very considerable reputation and goodwill worldwide in both its services and its brands.

The “www.facebook.com” website is ranked as the second most visited website in the world according to web information company Alexa and has the third highest traffic in Australia. It should be noted that CoCos Keeling Island, the country-code Top-Level Domain (“ccTLD”) which the disputed domain name is registered in, is a territory of Australia

The Facebook website, which operates under and features the FACEBOOK trademark as well as the <facebook.com> domain name, allows computer and Internet users to communicate with existing friends, make new friends, join and organize groups and events as well as share their personal profiles, statuses, activities, photos, links and videos.

The Complainant Facebook has registered numerous trademarks in the term FACEBOOK to protect its interests around the world, including:

- FACEBOOK – Chinese trademark number 5251162 filed on March 30, 2006;

- FACEBOOK – Chinese trademark number 6389501 filed on November 20, 2007;

- FACEBOOK – Australian trademark number 1154693 filed on December 22, 2006;

- FACEBOOK – Australian trademark number 1211165 filed on November 19, 2007;

- FACEBOOK – International trademark number 1075094 registered on July 16, 2010.

The disputed domain name was registered on June 18, 2008, at least four years after the Complainant started its activities.

On July 17, 2009, the Respondent sent an email to the Complainant’s representatives offering the disputed domain name for sale. On April 26, 2013, the Complainant’s lawyers sent a letter by registered mail and by email to the Respondent, requesting it to cease and desist any and all activity conducted in relation to the disputed domain name as well as transfer the disputed domain name to the Complainant. The Complainant’s lawyers explained that the Complainant had established a reputation and substantial goodwill worldwide and that the Respondent’s use of the disputed domain name amounted to a violation of the Complainant Facebook’s exclusive intellectual property rights.

The Respondent did not reply to this letter.

The disputed domain name is used by the Respondent to point to a page advising that the disputed domain name is for sale and providing a link to Ename.com.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark on the following grounds:

1. The Complainant Facebook has established that it has trademark rights in the term “facebook” on which the Complainant bases the present Complaint.

2. It is submitted that the disputed domain name is identical or confusingly similar to the FACEBOOK trademarks.

3. The disputed domain name consists of the FACEBOOK trademark.

4. The mere addition of the “.cc” suffix does not constitute a sufficient element of distinctiveness which should be taken into consideration when evaluating the similarity of Facebook’s name and trademarks with the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

5. The Complainant carries the burden of proving that the Respondent has no rights in law or legitimate interests in respect of the disputed domain name. However, several previous panels have found under the Policy that, once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the disputed domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the disputed domain name.

6. A preliminary search by the Complainant has revealed that the Respondent has no Chinese or Australian trademark rights in the term “facebook”. Searches of the trademark registers in the following jurisdictions by the Complainant have also revealed no entries: Korea, Guatemala, Colombia, United States, Canada, Mexico, Austria, Benelux, Czech Republic, Denmark, Finland, France, Germany, Hungary, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Monaco, Norway, Poland, Portugal, Slovak Republic, Spain, Sweden, United Kingdom and Japan.

7. The Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark

8. The Complainant further asserts that the Respondent is unable to rely on any of the circumstances set out in the Policy, paragraphs 4(c)(i), (ii), and (iii), in order to demonstrate his rights and legitimate interests in the disputed domain name, namely:

(i) Bona Fide Use of the disputed domain name

The Respondent cannot assert that its use of the disputed domain name is in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy. As mentioned above, the disputed domain name was offered for sale to the Complainant and the dispute domain name points to a web page advising that the disputed domain name is for sale and providing a link to Ename.com. Such behaviour clearly does not constitute a bona fide offering of goods and services. As mentioned above, the Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the highly distinctive FACEBOOK trademark. Yet the disputed domain name registered by the Respondent reproduces the exact “facebook” term. Neither can the Respondent claim it made demonstrable preparations to use the dispute domain name prior to notification of this dispute by the Complainant in connection with a bona fide offering of services. There is no evidence that the website to which the disputed domain name resolves was ever used for a legitimate purpose, or that the Respondent had intended to do so. Since May 16, 2010, the sole purpose of the website at the disputed domain name has been to offer the disputed domain name for sale. The past and current pointing of the disputed domain name is an overwhelmingly clear indication of the Respondent’s intention to derive advantage through the use of the well-known trademark FACEBOOK.

(ii) Commonly Known by the disputed domain name

The Respondent cannot assert that it is commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. To the Complainant’s knowledge, the Respondent has no competing name or trademark rights in the disputed domain name.

(iii) Legitimate Noncommercial or Fair Use

The Respondent is currently unable to assert, in accordance with paragraph 4(c)(iii) of the Policy, that it is making a legitimate noncommercial or fair use of the disputed domain name. As can be seen above, the Respondent’s use of the disputed domain name cannot be seen as fair or legitimate.

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

Registration in bad faith

1. The disputed domain name was acquired for the purpose of selling it.

2. The disputed domain name was clearly acquired with a view to selling it to the Complainant or to a competitor of the Complainant for an amount in excess of it’s out of pocket costs. Indeed, the Respondent contacted the Complainant to try to sell the disputed domain name to the Complainant and, since September 2009, when the disputed domain name appears to have been used for the first time, the websites to which the disputed domain name has pointed have either allowed the Respondent to offer the disputed domain name for sale or to try to mislead and confuse Internet users. Whilst the practice of selling domain names in itself is not objectionable, it becomes so when the domain names in question are (or include) famous trademarks, especially when the priority dates of the trademarks in question pre-date the registration date of the domain names by a number of years, as in the case at hand. It is well established that professional domainers offering domain names for sale on third party websites have a duty to ensure that their domain names are non-infringing.

3. The Respondent had the Complainant in mind when it registered the disputed domain name. The term “facebook” is highly distinctive and well-known all around the world, including in China where the Respondent resides, and it would therefore be inconceivable for the Respondent to argue that it was unaware of the Complainant and its FACEBOOK trademarks at the time the disputed domain name was registered, especially as the FACEBOOK trademark rights significantly predate the registration of the disputed domain name.

4. The Complainant started to operate in February 2004, and the disputed domain name was registered at least four years later on June 18, 2008, whilst Facebook had acquired a large amount of goodwill and reputation which would lead to believe that the Respondent registered the disputed domain name in bad faith, with full knowledge that including the Complainant’s exact FACEBOOK well-known trademark in the disputed domain name would likely cause the Complainant to attempt its recuperation.

5. It is clear that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights and that the only reason that it could possibly have done so was to seek to unjustly benefit from such rights and ultimately take advantage of the Complainant.

6. The Complainant asserts that the Respondent registered the disputed domain name as it became aware of the fact that the Complainant’s online business was one of the fastest growing and most successful in the world. As stated above, the “www.facebook.com” website is ranked as the second most visited website in the world. The Complainant’s FACEBOOK trademark is highly distinctive and famous and has been continuously used since 2004, and there is no evidence of any actual or contemplated good faith of the use of the disputed domain name by the Respondent.

7. It would seem that Facebook first became inaccessible in China in July 2008 before the 2008 Summer Olympic Games in Beijing. The fact that access to the Facebook website is not possible in China, where the Respondent is based, does not mean that the Respondent could have been oblivious of the existence of this website. Indeed, the fact that the online networking service Facebook is not accessible in China is highly publicized and covered by media in China. A simple Internet search on Internet search engine <www.google.com>, using the keywords “Facebook” and “China” retrieves over 2,500,000,000 results, while a similar search for “Facebook” on Chinese search engine <www.baidu.com> (the most used search engine in Mainland China) retrieves up to 100,000,000 results.

8. One prior panel has held that, even though the website “www.facebook.com” is not accessible anymore in China, there were a large number of Facebook users in China and that the Complainant and its website were frequently reported by the online media. The panel therefore found that the respondent could only have had bad faith intent when registering the domain name <facebook.com.tw> (Facebook, Inc. v. Beijing Opera Fans Club, STLI Case No. D2010-011).

9. It is inconceivable that the Respondent did not have the Complainant’s trademark in mind when registering the disputed domain name on June 18, 2008, while the website “www.facebook.com” was still accessible in China, in particular given that it seems that the Respondent created a Facebook account six months before. The dispute domain name could not reasonably have been chosen for any reason other than seeking to benefit from the goodwill and reputation attached to the Complainant’s famous FACEBOOK trademark. It is therefore clear that the Respondent was aware of the value of the name FACEBOOK and attempted to capitalize on the FACEBOOK brand.

10. As demonstrated in the present Complaint, the Respondent could not have been unaware of the Complainant and its rights at the time of the registration of the disputed domain name given the latter’s fame worldwide, including in China. This clearly evidences the Respondent’s bad faith at the time of registration of the disputed domain name.

11. The disputed domain name was registered to benefit from the association of the famous FACEBOOK trademark and the popular “.cc” extension. The “.cc” extension is marketed as more than the ccTLD extension for CoCos Keeling Island.

12. The “.cc” extension also seems to be used as an abbreviation of Cycling Club (<rapha.cc>), Christian Church (<christchurch.cc>), Catholic Church (<ctk.cc>), Church Community (<communitychristian.org>), Creative Commons (<no-res.cc>), Community Center (<schueler.cc>) and Chinese Company (<aoe.cc>) as well as acting as a substitute for the “.com” extension. Being aware of the above, it is submitted that the Respondent registered the disputed domain name to benefit from the association of the famous FACEBOOK trademark and the popular “.cc” extension.

Use in bad faith

1. Given that the disputed domain name reproduces the exact FACEBOOK trademark, which is one of the world’s most famous and distinctive trademarks, it is submitted that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name in good faith and the disputed domain name could not reasonably have been chosen for any reason other than to benefit from the considerable goodwill and reputation attached to the renowned FACEBOOK trademark.

2. Other panels have held that there can be no legitimate purpose for the use of a domain name incorporating an entire trademark owned by another.

3. The offer for sale of the disputed domain name reinforces this blatant bad faith and implies that the Respondent intended to obtain financial gain by misappropriating the benefit of the extensive world-wide reputation that the Complainant has established. Such practice is contrary to paragraph 4(b)(iv) of the Policy as well as detrimental to the Complainant’s reputation and interests. Furthermore, the disputed domain name was registered on June 18, 2008, six months after the Respondent created what seems to be its Facebook account, at a time when the Complainant had long established considerable reputation and goodwill attached to its social networking activities and its trademarks. The FACEBOOK trademark is highly distinctive and famous.

4. The mark FACEBOOK has been continuously used for nine years in the course of the Complainant's social networking activities, and there is no evidence of any actual or contemplated good faith use of the disputed domain name by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, by an email dated January 11, 2014 the Respondent made the following comments:

“First, facebook is a popular English word, anyone can legally use, not as a special mark;

Secondly, .cc is a small island Cocos (Keeling) Islands country domain names belong to the same ccTLD, and .COM,. NET and. ORG gTLD such as different in nature. Any individual can register to use. Finally, facebook companies ask whether to obtain trademark rights in the country(Cocos).

For the above reasons, please carefully consider the WIPO Arbitration matters, grasp the scale.

In addition, it is best to facebook.cc owners provide a notice to the country’s official language. Thank you!”

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the FACEBOOK trademark for online social networking services in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the FACEBOOK trademark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s FACEBOOK mark is a widely-known mark for online social networking services offered by the Complainant.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain name consists of the Complainant’s trademark FACEBOOK in its entirety and the country-code Top-Level Domain (“ccTLD”) suffix “.cc”, denoting Coco Keeling islands a territory part of Australia. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “facebook” which for all intents and purposes is identical to the Complainant’s registered trademark FACEBOOK. Given the fame and notoriety of the Complainant’s FACEBOOK trademark, the addition of suffixes such as “.cc”, “.com” or “.net” being the country or generic gTLD is not a distinguishing factor.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s FACEBOOK trademark as a result of its fame and notoriety and (b) the distinctive character of the Complainant’s FACEBOOK trademark, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the FACEBOOK trademark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(1) there is no evidence of a legitimate use by the Respondent of the disputed domain name or reasons to justify the choice of the term “facebook” in its business operations;

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the FACEBOOK trademark;

(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

(4) the Complainant and its FACEBOOK trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the world for its online social networking services and is a registered trademark in many countries all over the world, including China. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the FACEBOOK trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to provide responses to the Complaint filed against it. The email dated January 11, 2014 from the Respondent contained brief comments which were not substantiated and in the opinion of the Panel, did not constitute a Response on the part of the Respondent. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service of the respondent’s website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its FACEBOOK trademark, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register the disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent’s “www.facebook.cc” website points to a page advising that the disputed domain name is for sale and providing a link to Ename.com. There is no evidence that the disputed domain name has been used for a bona fide offering of goods or services on the Internet. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s FACEBOOK trademark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous trademark in the disputed domain name, the conduct of the Respondent in attempting to sell the disputed domain name to the Complainant, the fact that the disputed domain name has never been used for bona fide offering of goods or services on the Internet and that the disputed domain name website points to a page advising that the disputed domain name is for sale and providing a link to Ename.com are certainly relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 <facebook.cc> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: February 27, 2014