WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Oneandone Private Registration 1&1 Internet Inc / Jennifer Benefield

Case No. D2019-1252

1. The Parties

Complainant is Facebook Inc., United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.

Respondent is Oneandone Private Registration 1&1 Internet Inc., United States / Jennifer Benefield, United States.

2. The Domain Name and Registrar

The disputed domain name <facebookfamousone.com> is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 7, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 16, 2019.

The Center verified that the Complaint together with the amended 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 June 25, 2019. The Center received several email communications from the formal Respondent Jennifer Benefield between June 7, 2019 and July 25, 2019. The Center also received several email communications from the beneficial holder of the domain name, Antonio Floyd, between June 7, 2019 and July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Center notified the Commencement of the Panel Appointment Process on July 19, 2019.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 25, 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

Complainant, Facebook, Inc., is one of the world’s leading providers 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”. Today, Facebook has more than 2.32 billion monthly active users and 1.47 billion daily active users on average worldwide.

Complainant owns registrations for the trademark FACEBOOK, including in the United States. Such trademark registrations include but are not limited to the following: International Registration No. 1075094 registered on July 16, 2010 (classes 9, 35, 36, 38, 41, 42 and 45); United States Trademark Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004) (class 38); and European Union trademark No. 004535381, FACEBOOK, registered on June 22, 2011 (classes 35 and 38).

Facebook is also the owner of numerous domain names consisting of or including the term FACEBOOK, under various generic Top-Level Domains (gTLDs) for instance, <facebook.com>, <facebook.org> and <facebook.biz>.

Respondent registered the disputed domain name, <facebookfamousone.com> on July 24, 2018. The disputed domain name resolves to a website titled “Facebook Famous” that offers for sale various apparel and other merchandise, some of which contains the phrase “Facebook Famous”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it owns numerous trademark registrations in FACEBOOK in many jurisdictions throughout the world, including in the United States, and therefore Complainant has established rights in the FACEBOOK trademark. Complainant asserts that the disputed domain name incorporates Complainant's FACEBOOK trademark in its entirety with the addition of the terms “famous” and “one” under the “.com” gTLD. Complainant asserts that as a result of the well-known character of the FACEBOOK trademark, when confronted with a combination of the suffixes “famous” and “one”, many Internet users would be confused and assume that the disputed domain name is in some way connected with Complainant. Complainant asserts that accordingly, the disputed domain name is confusingly similar to Complainant’s FACEBOOK trademarks.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, because Respondent is not a licensee of Complainant, nor has Respondent been otherwise allowed by Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. According to Complainant, 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. Complainant asserts that the disputed domain name is resolving to a website selling merchandise such as clothing, hats, mugs and glassware, that some of these items are completely unrelated to Complainant, and others are marked with logos supposedly related to Complainant, such as “Facebook Famous” and “Mr 25million views”. Complainant asserts that such use of the disputed domain name, which is confusingly similar to Complainant’s distinctive and well-known trademark, to point, apparently for marketing purposes, Internet users to a website promoting and offering for sale various unconnected products cannot be considered as bona fide use.

According to Complainant, Respondent is using a privacy service to hide his identity, but the website to which the disputed domain name is pointing refers to the individual Antonio Floyd. As such, there is no evidence that Respondent’s name resembles the disputed domain name in any way. Complainant further asserts that Respondent, who appears to run a talent management firm, has not secured or even sought to secure any valid trademark rights in the term FACEBOOK.

Complainant asserts that Respondent is not currently making a legitimate noncommercial or fair use of the disputed domain name, given that the disputed domain name is pointing to a website offering various products for sale. Complainant further states that there is no legitimate reason which could explain why the highly distinctive and renowned FACEBOOK trademark is being used by Respondent in connection with such activities except to take advantage of the significant goodwill in the term FACEBOOK and mislead Internet users.

Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to Complainant, given Complainant’s renown and goodwill worldwide, it would be inconceivable for Respondent to argue that he did not have knowledge of Complainant’s FACEBOOK trademark at the time of registration of the Domain Name in 2018. Complainant asserts that Respondent’s actual use of the disputed domain name proves that he was aware of Complainant’s rights at the time of the registration of the disputed domain name. Complainant therefore submits that Respondent registered the disputed domain name in full knowledge of Complainant’s rights.

Complainant submits that Respondent’s use of a privacy service to hide his identity serves as an additional indicator of Respondent’s bad faith in this context.

Complainant submits that the Domain Name is being used to intentionally attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his websites, in accordance with paragraph 4(b)(iv) of the Policy. According to Complainant, Respondent’s use of the disputed domain name, which is confusingly similar to Complainant’s distinctive and well-known FACEBOOK trademark, to attract Internet users to his website for marketing purposes, constitutes strong evidence of Respondent’s bad faith in accordance with paragraph 4(b)(iv) of the Policy.

Accordingly, Complainant requests the transfer of the disputed domain name.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. However, Respondent Jennifer Benefield indicated that she registered the disputed domain name on behalf of her client Antonio Floyd. The beneficial holder of the disputed domain name informed the Center of his beneficial ownership of the disputed domain name, that it has nothing to do with Complainant, and that Respondent Jennifer Benefield should be removed from the case.

6. Discussion and Findings

6.1 Procedural Issue: Appropriate Respondent

As an initial matter, the Panel notes that there is a question regarding the proper Respondent in this matter, given the use of a proxy service that appears to have been used to obscure underlying registration information in the public WhoIs database record for the disputed domain name, and after the disclosure of underlying registration information by the Registrar, a situation where the registrant identified by the concerned Registrar was merely acting as an agent on behalf of another beneficial holder. The Panel notes that paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement states that a WhoIs-listed registrant that intends to license use of a domain name (referred to as the “Registered Name Holder”) accepts liability for any use of the relevant domain name unless it timely discloses the contact information and identity of the licensee. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.6; ICANN, 2013 Registrar Accreditation Agreement, section 3.7.7.3 (September 17, 2013). The domain name registration agreement between the registrar and registrant passes through this requirement.

Here, the actual registrant of the Domain Name is Jennifer Benefield, who presumably has the technical ability to administer the disputed domain name, whereas the beneficial holder of the Domain Name is Antonio Floyd, for whom Ms. Benefield is merely acting as an agent in connection with the disputed domain name.

Accordingly, both parties will collectively be referred to and treated as “Respondent” in this matter.

6.2 Analysis

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the FACEBOOK mark, which has been registered in the United States and elsewhere, well before Respondent registered the disputed domain name.

With Complainant’s rights in the FACEBOOK mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain in which the domain name is registered, or in this case “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

In this case, the disputed domain name is confusingly similar to Complainant’s FACEBOOK mark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the descriptive or generic terms “famous one” after the dominant FACEBOOK element does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s marks. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the FACEBOOK mark and in showing that the disputed domain name is confusingly similar to this mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its FACEBOOK mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the FACEBOOK mark in any way, included in the disputed domain name. Respondent has not made any bona fide offering of goods or services, nor made a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent has used the disputed domain name in an attempt to sell various apparel or homeware products unrelated to Complainant and in some cases also bearing Complainant’s FACEBOOK mark without authorization. This does not constitute a bona fide offering of goods or services, and given its commercial nature, cannot constitute a legitimate noncommercial or fair use of the disputed domain name. See WIPO Overview 3.0, section 2.5.3; Unifi, Inc. v. CHARISA CHANBUA, UNIFICLOTHING / WHOISGUARD PROTECTED, WHOISGUARD, INC., WIPO Case No. D2016-1393 (“The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name, the Respondent has not been commonly known by the disputed domain name, the Respondent has no prior rights or legitimate interests in the disputed domain name, and the disputed domain name resolved to a website which showed the Stylized Mark, offered apparel for sale, and provided customer testimonials. As the Respondent used the disputed domain name for its own commercial gain, and as detailed below, there is no bona fide offering of goods and services by the Respondent. The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.”).

Given that Complainant has established with sufficient evidence that it owns rights in the FACEBOOK mark, and given Respondent’s above noted actions and failure to rebut Complainant’s contentions, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

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

Here, Complainant has presented evidence that Respondent registered and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website located at the disputed domain name, by creating a likelihood of confusion with Complainant’s FACEBOOK mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of products on Respondent’s website, within the meaning of Policy paragraph 4(b)(iv).

Respondent was on actual notice of Complainant’s rights in its FACEBOOK mark given the fame of this mark at the time Respondent registered the disputed domain name, and given its use of the FACEBOOK mark to market Respondent and its goods and services.

Accordingly, the Panel finds that Complainant succeeds under this element 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, <facebookfamousone.com>, be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: August 5, 2019