The Complainant is Facebook, Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jean Baptiste Fallacher, France.
The disputed domain name <facebọoḵ.com> [xn--facebo-gq7bo4c.com] is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2019. On September 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 the Complainant on September 6, 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 September 11, 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 September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 9, 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.
The Complainant was founded in 2004 and is a leading provider of online social networking services via its website available at “www.facebook.com”. The Complainant’s social network, Facebook has approximately 2.37 billion monthly active users and 1.56 billion daily active users on average worldwide. The Complainant also offers users to play games, watch gaming videos, or engage in gaming groups on Facebook through its Facebook Gaming program.
The Complainant is the owner of numerous trademark registrations in the term FACEBOOK in many jurisdictions throughout the world, including European Union Trade Mark No. 004535381, FACEBOOK, registered on June 22, 2011, for services in classes 35 and 38.
The Complainant is the owner of numerous domain names consisting of or including the FACEBOOK trademark under various generic Top-Level Domains (“gTLDs”) as well as under various country code Top‑Level Domains (“ccTLDs”).
The disputed domain name was registered on May 29, 2018. The disputed domain name does not resolve to an active website.
The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name translates as the internationalized domain name (“IDN”) <facebọoḵ.com> and prior panels deciding under the Policy have found IDNs and their Punycode translations to be equivalent. Moreover, the gTLD “.com”, may be disregarded for the purposes of assessment under the first element.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Complainant has no prior business relationship with the Respondent whatsoever. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, nor can the Respondent credibly claim to be commonly known by the disputed domain name, since the Respondent identifies himself in the WhoIs as “Jean Baptiste Fallacher”.
The Complainant finally submits that the Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world. It has been continuously and extensively used since 2004 in connection with the Complainant’s social network, having rapidly acquired considerable goodwill and renown worldwide. The Complainant therefore submits that it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s FACEBOOK trademark at the time of registration of the disputed domain name. Although it seems that the Respondent has never actively used the disputed domain name, the Complainant submits that such passive holding of the disputed domain name does not preclude a finding of bad faith given the overall circumstances of the case, notably given the Complainant’s distinctiveness and renown worldwide and the Respondent’s failure to provide any evidence of actual or contemplated good faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, 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, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that the disputed domain name <facebọoḵ.com> [xn--facebo-gq7bo4c.com] is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark FACEBOOK because it consists of an IDN version of the mark, which visually is de facto an identical reproduction of the FACEBOOK mark. The gTLD “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. Moreover, the Panel finds that the composition of the disputed domain name is such that it effectively impersonates the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 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 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the evidence on record of the use and worldwide reputation of the Complainant’s trademark FACEBOOK, and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name does not resolve to an active webpage nor does it seem to have been actively used in other ways. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith”. See section 3.3 of the WIPO Overview 3.0.
Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark FACEBOOK and the gTLD “.com”, that no Response has been filed and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <facebọoḵ.com> [xn--facebo-gq7bo4c.com] be transferred to the Complainant.
Date: October 23, 2019
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