WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / regina iliusievna

Case No. D2019-1844

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / regina iliusievna, Finland.

2. The Domain Names and Registrar

The disputed domain names <fb-nuoma.info> and <fbnuoma.info> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On August 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 6, 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 the Respondent of the Complaint, and the proceedings commenced on August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 10, 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 was founded in 2004. It provides online social networking services.

The Complainant is the owner of the following trademark registrations for the sign “FB” (the “FB trademark”):
- the European Union trademark FB with registration No. 008981383, registered on August 23, 2011 for services in International Class 45;
- the United States trademark FB with registration No. 4659777, registered on December 23, 2014 for services in International Class 35; and
- the Canadian trademark FB with registration No. TMA929282, registered on February 18, 2016 for services in International Class 45.

The Complainant is the owner of the domain names <fb.com>, <fb.am>, <fb.asia>, <fb.bs>, <fb.co>, <fb.fr>, <fb.im>, <fb.ie>, <fb.me>, <fb.pe>, <fb.pt>, <fb.com.pt>, <fb.lk>, <fb.uk> and <fb.co.uk>.

The disputed domain name <fbnuoma.info> was registered on October 1, 2018, and the disputed domain name <fb-nuoma.info> was registered on October 3, 2018. They are currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant states that it provides its social networking services in more than 70 languages and has more than 1.94 billion monthly active users and 1.28 billion daily active users on average worldwide. The Complainant’s website at “www.facebook.com” is currently ranked as the 3rd most visited website in the world, 8th in Finland and 4th in Lithuania. The Complainant’s smartphone application is ranked as the most downloaded in the world as per App Annie’s Top Apps Ranking in 2019.

The Complainant submits that the disputed domain names are confusingly similar to the FB trademark, which they incorporate with the addition of the generic term “nuoma”, meaning “rent” in the Lithuanian language.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. It points out that the Respondent is not a licensee of the Complainant and has not been allowed by the Complainant to use the FB trademark in a domain name or otherwise. According to the Complainant, the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, but has associated them with websites in the Lithuanian language purporting to rent Facebook accounts for marketing purposes so as to circumvent the Complainant’s advertising policies restricting the number of advertisements that can be created via a single Facebook account. Such use of the disputed domain names is trading on the Complainant’s reputation and goodwill to divert traffic to the associated websites.

The Complainant asserts that the disputed domain names were registered and are being used in bad faith. According to it, since the FB trademark has acquired considerable goodwill and renown worldwide, the Respondent has registered the disputed domain names with knowledge of the Complainant and to capitalize on the Complainant’s goodwill and reputation. The Complainant further submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the disputed domain names for the purpose of preventing the Complainant from reflecting the FB trademark in corresponding domain names.

According to the Complainant, the Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the FB trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, and to offer Internet users to rent Facebook accounts for marketing purposes in violation of the Complainant’s Terms of Service, pursuant to which Facebook users must not share their password or give access to their Facebook accounts to third parties without Facebook’s prior permission. The Complainant also submits that the Respondent may have used the disputed domain names to illegitimately collect Facebook account credentials for commercial gain in an unauthorized and insecure manner and thus put the privacy and security of Facebook users at great risk.

The Complainant points out that on July 12, 2019, its lawyer sent a cease-and-desist letter to the Respondent. The Respondent did not reply to this letter but the disputed domain name <fbnuoma.info> stopped resolving.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence of the registrations of the FB trademark and has thus established its rights in it for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.info” gTLD section of the disputed domain names.

The relevant part of the disputed domain name <fb-nuoma.info> is therefore the sequence “fb-nuoma”. It consists of the elements “fb” and “nuoma”, separated by a hyphen. The “fb” element is identical to the FB trademark, while the “nuoma” element means “rent” in the Lithuanian language. The Panel is not aware of another meaning of “nuoma” in other languages, and accepts that this element is adictionary word. The “fb” element dominates the sequence “fb-nuoma” and is easily discernible within the disputed domain name, while the addition of a hyphen and of the “nuoma” element do not prevent the confusing similarity between the disputed domain name and the FB trademark.

The same analysis is applicable to the disputed domain name <fbnuoma.info>, as the only difference between it and the disputed domain name <fb-nuoma.info> is that the former does not include a hyphen between the elements “fb” and “nuoma”.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the FB trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on a complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been allowed by the Complainant to use the FB trademark and has used the disputed domain names in connection with websites offering to rent Facebook accounts for marketing purposes so as to circumvent the Complainant’s advertising policies restricting the number of advertisements that can be created via a single Facebook account. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not replied to the Complainant’s contentions and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The evidence in the case file supports the Complainant’s contentions. The disputed domain names are confusingly similar to the FB trademark which was registered five years earlier. They also include a word that means “rent” in the Lithuanian language and have at certain points in time resolved to websites that offer Facebook accounts for rent.

It appears as likely that Internet users who speak Lithuanian may regard the disputed domain name <fb-nuoma.info> as pointing to a website that offers rental services related to the Complainant or its business, while the attention of users that do not speak Lithuanian would be drawn to the “fb” element of this disputed domain name.

In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its FB trademark, has registered and used the disputed domain names in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s websites and offer them the rent of Facebook accounts likely for a commercial gain, which does not appear to the Panel as being a legitimate activity in view of its prohibition by the Complainant. In the Panel’s view, such use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, 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 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 your website or location or of a product or service on your website or location.”

The Complainant submits that the Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the FB trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, and to offer Internet users to rent Facebook accounts for marketing purposes in violation of the Complainant’s Terms of Service, pursuant to which Facebook users must not share their password or give access to their Facebook accounts to third parties without Facebook’s prior permission. The Complainant also submits that the Respondent may have used the disputed domain names to illegitimately collect Facebook account credentials for commercial gain in an unauthorized and insecure manner and thus put the privacy and security of Facebook users at great risk.

As discussed above, the disputed domain names are confusingly similar to the FB trademark and have been at some points in time linked to websites that offered Facebook accounts for rent. This activity has not been denied by the Respondent and is prohibited by the Complainant’s terms of service.

Taking all the above into account, the Panel accepts that the Respondent has registered and used the disputed domain names targeting the Complainant. By creating a likelihood of confusion with the Complainant’s FB trademark, the Respondent has attempted to attract traffic to the disputed domain names by making Internet users believe that they are reaching an online location related to the Complainant, and then to offer them, for commercial gain, services that are forbidden by the Complainant.

There is also the risk mentioned by the Complainant, i.e., that of an illegitimate collection and use of Facebook account credentials through the use of the disputed domain names by the Respondent, who has concealed its identity by means of a privacy protection service and has provided false contact details to the Registrar, as evidenced in the case file.

In view of the above, the Panel finds that the disputed domain names have been registered and used in bad faith.

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 names, <fb-nuoma.info> and <fbnuoma.info>, be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: September 20, 2019