WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-0252

1. The Parties

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

The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <fbhelpcenter.info> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On February 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and contact information for the disputed domain name.

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 February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2019.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on March 4, 2019. 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 in this administrative proceeding is Facebook, Inc., an American corporation with its principal place of business at Menlo Park, California, United States.

According to the information in the WhoIs the registrant of the disputed domain name is Domains By Proxy, LLC, a privacy registration service provided by the registrar, GoDaddy.com, LLC, based in the United States.

Before the filing of the Complaint, on July 11, 2018, the Complainant sent a disclosure request to Domains By Proxy, LLC, asserting the Complainant’s trademark rights and requesting the underlying registrant’s detailed information with a view to taking necessary legal action. Domains By Proxy, LLC provided the registrant’s contact details to the Complainant. A copy of the correspondence between the Complainant and Domains By Proxy, LLC providing the Respondent’s contact information is provided at Annex 2.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, of Panama City, Panama.

The disputed domain name is <fbhelpcenter.info>, which was registered on June 25, 2018. The disputed domain name redirects to dynamic advertising websites, to a parking page with pay-per-click links, or to a website to spread malware.

The registrar with which the Domain Name was registered is GoDaddy.com, LLC:

The Complainant, Facebook, Inc., is one of the world’s leading provider of online social networking services. Founded in 2004, Facebook allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. Access to Facebook was originally restricted to students at Harvard University (Boston, Massachusetts, United States) but quickly expanded to other universities and, in 2006, to anyone in the world with a valid email address. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010, 1 billion users by September 2012, and 1.44 billion users by March 2015.

The Complainant asserted that it has developed considerable reputation and goodwill worldwide in both its services and brands, including its FB trademark. The term FB was used by numerous international newspapers as early as in 2011, such as Generation FB, the New York Times dated it June 23, 2011.

The Complainant affirmed that the trademark FACEBOOK and FB is well known worldwide. Given the exclusive online nature of the Complainant’s social networking business, the Complainant’s domain names consisting of its FB trademarks are not only the heart of its entire business but also the main way for millions of users to benefit themselves of its services. Reflecting its global reach, the Complainant is the owner of numerous domain names consisting of the term FB, for instance, <fb.com>, as well as, for instance, <fb.co> (Colombia), <fb.pe> (Peru), <fb.bs> (Bahamas), <fb.am> (Armenia), <fb.asia> (Asia), <fb.fr> (France), <fb.im> (Isle of Man), <fb.ie> (Ireland), <fb.me> (Montenegro), <fb.pt> and <fb.com.pt> (Portugal), <fb.lk> (Sri Lanka), and <fb.uk> and <fb.co.uk> (United Kingdom).

The Complainant provided enough evidence of the ownership of the term FB in many jurisdictions throughout the world, that includes but are not limited to the following:

US Trademark No. 4659777, FB, registered on December 23, 2014 (first use in commerce in April 2014);
Canadian Trademark No. TMA929282, FB, registered on February 18, 2016;
Chilean Trademark No. 940863, FB, registered on December 19, 2011;
Mexican Trademark No. 1254929, FB, registered on November 30, 2011;
European Union Trademark No. 008981383, FB, registered on August 23, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for a transfer of the disputed domain name are present in this case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

In these proceedings, the Complainant provided evidence of their numerous trademark registrations of the term FB around the world. Such trademarks registrations include but are not limited to the following:

US Trademark No. 4659777, FB, registered on December 23, 2014 (first use in commerce in April 2014);
Canadian Trademark No. TMA929282, FB, registered on February 18, 2016;
Chilean Trademark No. 940863, FB, registered on December 19, 2011;
Mexican Trademark No. 1254929, FB, registered on November 30, 2011;
European Union Trademark No. 008981383, FB, registered on August 23, 2011.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Due to the fact that the disputed domain name incorporates the Complainant’s FB trademark in its entirety, with the addition of the terms “help” and “center”, which does not prevent a finding of consuming similarity. Other fellow Panels have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

Regarding the addition of the terms “help” and “center”, other panels have held the same opinion. For example, Facebook, Inc. v. Chigozie Ihebom, WIPO Case No. D2018-2190, in which the Panel states that, “[w]here a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark. It is apparent that a side-by-side comparison of the domain name <fblottery.org> and the FB trademark, the latter is recognizable within the disputed domain name”.

It has been generally accepted by many other UDRP panels that the generic Top-Level Domain (“gTLD”), such as “.info”, is irrelevant when considering whether a domain name is identical or confusingly similar to a trademark, as it is a functional element. The opinion of this Panel is fully consistent with the opinions of many other UDRP panels.

For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy,

“[a] of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.”

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that 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 disputed domain name. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the Respondent did not answer, therefore did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

The Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant argued that it has not authorized or given any license to the Respondent in order to register, use or include their own trademarks in a domain name. Furthermore, the Complainant established that the Respondent is not commonly known by the disputed domain name or the trademark FB.

The Complainant stated that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks.

According to the Complainant, 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 Domain Name.

In these proceedings, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services, because the Respondent is seeking to unduly profit from the Complainant’s goodwill and renowned Trademark by attracting Internet users to its websites for financial gain. Furthermore, in these proceedings the Complainant presented evidence that proves that the disputed domain name redirects to dynamic advertising websites which frequently changes, such as the promotion of charity services or a website highly likely to be spreading malware or malicious software. In this case, the disputed domain name also resolves to a parking page with sponsored links targeting the Complainant’s FACEBOOK trademark. Other Panels have expressed similar opinions, for example in Facebook, Inc. v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2018-0776, where the Panel also found that when a disputed domain name is used for spreading malware, as one of the websites resolved to by the disputed domain name informs users that their system is damaged and invites them to click on an “update button” to install suspicious software, such use cannot qualify as a bone fide use under the Policy. Other Panels have stated that before, for example: LegalZoom.com, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, WIPO Case No. D2017-1894, stating, “[i]nstalling malware on Internet users’ computers can never qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use”. See also Wikimedia Foundation, Inc. v. Walter Gerbert,WIPO Case No. D2016-1346, “the Respondent is using <nlwikipedia.org> to disseminate malicious computer software or malware. Use of a well-known mark to deceive Internet users and maliciously infect their computer system is not a bona fide use of the mark”.

The Panel also finds that even without the Respondent’s arguments or evidence, it is not likely that the Respondent is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. To the contrary, the evidence presented in these proceedings by the Complainant shows that the primary intention of the Respondent is not to use the disputed domain name in a fair manner, but to somehow unfairly exploit the goodwill and reputation attached to the Complainant’s trademark for the Respondent’s own, or a third party’s, financial gain. Furthermore, because the Respondent is using the disputed domain name to misleadingly divert Internet users to dynamic advertising websites and that the disputed domain name falsely suggests affiliation with the Complainant by incorporating the Complainant’s FB trademark so as to confuse Internet users, will generally exclude any possible fair use as per section 2.5 of the WIPO Overview 3.0.

For all the above-mentioned reasons, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent and therefore the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant trademark FB is a highly distinctive and well known throughout the world and especially for the Internet society since the year 2004. In this case and for this Panel, the trademark is well known, and the Respondent must have known or was aware of the Complainant’s FB mark at the time of registration of the disputed domain name in June 25, 2018.

Acknowledging the popularity of the FB trademark in the world, the Panel finds that the Respondent’s knowledge of the Complainant’s rights at the time of registration of the disputed domain name that was chosen by the Respondent was in order to capitalize on the Complainant’s goodwill and reputation and to increase the number of visitors to the parking page containing sponsored links. See, Facebook, Inc. v. Cetinje s.r.o., WIPO Case No. D2014-1070, “[t]he Respondent evidently knew about the Complainant’s rights attached to its reputed FACEBOOK trademark, one of the world’s famous and distinctive marks, and that the only plausible reason for registering the disputed domain name is the Respondent’s intent to unjustly benefit from the considerable goodwill and reputation attached to the FACEBOOK trademark”.

Therefore, the Panel finds that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Respondent’s use of the disputed domain name is clearly intended for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy, as it redirects Internet users to dynamic advertising websites or a parking page with sponsored links targeting the Complainant’s trademark. See Facebook, Inc. v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2018-0776 (“The disputed domain names <mfacebook.com>, <facebookjobs.com> and <fazebook.com> redirect to dynamic advertising websites from which the Respondent or a third party is clearly obtaining some form of financial gain, and the disputed domain name <ffacbook.com> resolves to a parking page with sponsored links targeting the Complainant’s FACEBOOK trademark”).

Also, the Panel found bad faith in using the disputed domain name, due to the fact that the Respondent has deliberately chosen to conceal its identity by means of a privacy protection service, which is another strong indication of the Respondent’s intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. Indeed, given the overall circumstances of this case (in particular the Complainant’s strong reputation worldwide and the fact that the Respondent is a serial cybersquatter), there is no reason that could explain why the Respondent would need to protect its identity by means of a privacy shield other than to block or intentionally delay disclosure of its true identity. See section 3.6 of the WIPO Overview 3.0 and also Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, “[t]he use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is also consistent with an inference of bad faith in registering and using the Domain Name, given the other evidence in this case of evasive and irresponsible conduct”.

According to this Panel, the Respondent’s lack of a response to the Complainant’s cease and desist letter is an additional strong indication of the Respondent’s bad faith. See Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066, “failure by the Respondent to answer the Complainant’s cease and desist letter, as mentioned above, is also evidence of the Respondent’s bad faith”.

For all the foregoing reasons the Panel finds that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

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 <fbhelpcenter.info> be transferred to the Complainant.

Ada L. Redondo Aguilera
Sole Panelist
Date: March 18, 2019