The Complainant is Facebook Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Mats Oscarsson of Malmö, Skane, Sweden, self-represented.
The disputed domain name <facebook.ec> is registered with NIC.EC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2015. On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2015, 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 December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. The Response was filed with the Center on December 18, 2015.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 13, 2016. 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, Facebook Inc., was founded in 2004 and currently is a world leading provider of online social networking services.
The Complainant is the owner of numerous generic Top-Level Domains (“gTLDs”) including the term “Facebook”, such as <facebook.com>, <facebook.org>, <facebook.net> and <facebook.biz> as well as country code Top-Level Domains (“ccTLDs”) such as <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cl> (Chile), <facebook.cn> (China), <facebook.co> (Colombia), <facebook.do> (Dominican Republic), <facebook.com.ec> (Ecuador), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.com.gr> (Greece), <facebook.hu> (Hungary), <facebook.in> (India), <facebook.it> (Italy), <facebook.mx> (Mexico), <facebook.pk> (Pakistan), <facebook.es> (Spain), <facebook.se> (Sweden), <facebook.com.tr> (Turkey), <facebook.ua> (Ukraine) and <facebook.us> (United States).
In addition to its strong presence online, the Complainant has secured ownership of numerous trademark registrations in the term “Facebook” in many jurisdictions throughout the world.
The disputed domain name was registered on November 30, 2007.
The Panel accessed the disputed domain name on January 26, 2016, when the disputed domain name was pointing to the NIC.EC registrar holding page in English and in Spanish stating that “The domain name facebook.ec is registered. For information on this domain or to check other domain names enter the domain name on the search box”.
The Complainant makes the following contentions:
- The language of the proceeding shall be English. The disputed domain name consists of an exact match of the Complainant’s FACEBOOK trademark, which is an English term. The content of the website to which the disputed domain name was pointing was in English and therefore the Respondent was targeting English speakers; thus, the Respondent is likely to have a good understanding of the English language. Prior communications between the Complainant’s lawyers outside of Sweden and the Respondent have been in English and so the Respondent does have a good understanding of the English language. There is no evidence to suggest that the Respondent, who is based in Sweden, understands Spanish. The Registration Agreement pursuant to which the disputed domain name has been registered is also available in English. Finally, it would be disproportionate to require the Complainant not to submit the present Complaint in English as this would result in additional expense and unnecessary delay for the Complainant.
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The Complainant owns numerous trademark registrations in the term FACEBOOK in many jurisdictions around the world, including in Ecuador and in Sweden. The disputed domain name identically reproduces the Complainant’s trademark without adornment under the .EC ccTLD for Ecuador. It is well accepted that the suffix, such as .EC, is generally irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. Numerous 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 interests 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 domain name” (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002 1064, and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (‘WIPO Overview 2.0’)). The Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name was previously pointing to a parking page containing sponsored links targeting the Complainant’s trademark (and also offering the disputed domain name for sale), and between 2009 and 2013 was pointing to a website displaying advertising banners. The Respondent cannot conceivably claim that he is commonly known by the Complainant’s trademark, in accordance with paragraph 4(c)(ii) of the Policy, given the Complainant’s notoriety and the fact that the term “Facebook” is exclusively associated with the Complainant. Neither can the Respondent assert that he has made or is currently 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 trademark or service mark at issue, pursuant to paragraph 4(c)(iii) of the Policy. The disputed domain name is currently pointing to a registrar holding page and was previously pointing to parking page that was clearly commercial in nature, as evidenced by the presence of numerous commercial links from which the Respondent (or a third party) was undoubtedly obtaining financial gain. Such use of the disputed domain name cannot be considered either legitimate noncommercial or fair, as the Respondent was clearly unfairly exploiting the goodwill attached to the Complainant’s trademark. Finally, given the overwhelming renown and explosive popularity of the Complainant’s FACEBOOK trademark worldwide, and the nature of the disputed domain name itself which consists of an exact match of the Complainant’s trademark under “.ec” (ccTLD for Ecuador), it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent (or a third party) that would not be illegitimate, as it would inevitably result in misleading diversion and unfair taking advantage of the Complainant’s rights.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world and has been continuously and extensively used since 2004, before the disputed domain name was registered by the Respondent, and rapidly acquired considerable goodwill and renown worldwide, including in both Sweden and in Ecuador. Given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s rights at the time of registration of the disputed domain name in 2007, especially as the Complainant had already reached over 50 million users worldwide, including one million users in Sweden, where the Respondent is based. Additionally, the Respondent registered the disputed domain name for the purpose of preventing the Complainant from reflecting its trademark under “.ec” ccTLD, and has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy. Given that the Respondent was undoubtedly aware of the Complainant’s rapid growth and popularity, there is no doubt that the Respondent anticipated that the Complainant would be interested in reflecting its trademark under the “.ec” ccTLD for Ecuador and thus registered the disputed domain name in order to prevent the Complainant from doing so. The fact that the Respondent is also the registrant of other domain names identically reproducing third party trademarks, namely <wikipedia.com.ec>, <dentotape.com> and <sweetdrops.com>, is a further strong indication of the Respondent’s bad faith. Also, the Respondent “registered or ... acquired the [D]omain [N]ame primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the [C]omplainant who is the owner of the trademark..., for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name”, in accordance with paragraph 4(b)(i) of the Policy, as strongly suggested by the exchanges between the Complainant’s lawyers and the Respondent in which the Respondent requested EUR 2,000 in exchange for the transfer of the disputed domain name, and the fact that in 2008 the disputed domain name was offered for sale. Furthermore, the Respondent’s prior use of the disputed domain name to point to a parking website displaying commercial links targeting the Complainant’s trademark or to pages displaying advertising banners (as described above) clearly constituted bad faith use, as the Respondent was intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website, in accordance with paragraph 4(b)(iv) of the Policy. The Respondent’s current passive holding of the disputed domain name (as it is pointing to a registrar holding page) constitutes, in the circumstances of this case, strong evidence of bad faith, particularly in view of the fact that the Complainant’s trademark is highly distinctive and renowned worldwide, including in Ecuador and in Sweden (the country of residence of the Respondent). Given the overwhelming renown and explosive popularity of the Complainant’s trademark worldwide, including in Ecuador, and the nature of the disputed domain name, which consists of an exact match of the Complainant’s trademark, there simply cannot be any actual or contemplated good faith use of the disputed domain name as any active use would be misleading given that internet users would no doubt expect to find the Complainant’s official website dedicated to internet users based in Ecuador. Finally, the Respondent’s decision to break off negotiations with the Complainant despite the Complainant’s offer to reimburse the Respondent his out-of-pocket expenses and attempt to try and find a workable solution to the Respondent’s refusal to provide his ID also demonstrates the Respondent’s bad faith, as it shows that he had no real intention of transferring the disputed domain name to the Complainant without payment in excess of his out-of-pocket costs. The Respondent’s actions have put the Complainant to considerable inconvenience and expense and have unnecessary delayed the Complainant’s recovery of the disputed domain name and should therefore be considered additional strong evidence of bad faith.
The Respondent submitted a Response by email making the following contentions:
- The Respondent has tried to eliminate (de-register) the disputed domain name and has sent a Non-Renewal Request to the Registrar, making clear he did not wish to remain as the registrant for the disputed domain name. The Respondent has also suggested to the Complainant to sign a WIPO Standard Settlement form.
- Therefore, twice the Respondent has suggested to fill in and sign domain transfer forms from neutral third party sources; and twice the Complainant has refused to co-operate using those forms from neutral third party sources that would have started a transfer of the domain name to the Complainant.
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registration Agreement pursuant to which the disputed domain name has been registered is in English, and the Complainant requests the language of the proceeding to be English.
The Respondent has not contested this request and presented his Response also in English.
Therefore, this Panel accepts English as the language of the present proceeding.
According to clause Nineteenth of the .EC Domain Names Registration Agreement, if no agreement is reached in a conflict between a user and third parties that feel harmed by the registries or renewal of registries previously done of domain names of third or second level with the ccTLD “.ec”, the user and the third parties will submit themselves to an arbitrage administered by ICANN, according to the Policy.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove 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.
The Panel has no doubt that “Facebook” is a term directly connected with the Complainant’s online activities.
Annex 15 to the Complaint shows that the Complainant owns numerous trademark registrations in the term “Facebook” in many jurisdictions around the world since 2006.
The trademark FACEBOOK is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark basically by the addition of the country ccTLD “.ec”.
It is well established that the addition of a gTLD or of a ccTLD extension such as “.ec” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s Response and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
Furthermore, the present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2007) the trademark FACEBOOK was already internationally renowned and directly connected to the Complainant’s online activities, including in Ecuador and in Sweden.
Numerous prior UDRP panels have recognized the strength and renown of the Complainant’s trademark (Facebook, Inc. v. Xiamen eName Network Co., Ltd. / Shawn, Wang, WIPO Case No. D2015-1339; Facebook, Inc. v. Protection Domain, WIPO Case No. D2015-1152; Facebook, Inc. v. Cetinje s.r.o., WIPO Case No. D2014-1070; Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004; Facebook, Inc.v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin, WIPO Case No. D2013-2030; Facebook, Inc. v. Amjad Abbas, WIPO Case No. DME2010-0005; Facebook Inc. c. Usta Cafer, WIPO Case No. DES2009-0006; and Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainants’ trademark, as well as that the adoption of the term “facebook” within the disputed domain name could be a mere coincidence.
Furthermore, a search carried out by the Complainant in the Internet Archive (available at “www.archive.org”) revealed that in the past the disputed domain name was pointing to parking pages containing sponsored links in English targeting the Complainant’s trademark.
In doing so, the Respondent:
(i) created a likelihood of confusion with the Complainants’ trademark; and
(ii) potentially obtained revenue from this practice; and
(iii) deprived the Complainant from attending prospective users who were clearly looking for the Complainant’s online social network.
It is true that presently the disputed domain name does not resolve to any active website.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview 2.0 paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
The non-collaborative posture of the Respondent, (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party well-known trademark, certainly cannot be used in benefit of the Respondent in this Panel’s opinion.
Such circumstances, including (d) the lack of any plausible interpretation for the adoption of the term “facebook” by the Respondent, and (e) the evidence provided by the Complainant demonstration of previous uses of the disputed domain name, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <facebook.ec> be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: January 27, 2016