WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Contact Privacy Inc. Customer 1241882208 / Contact Privacy Inc. Customer 1241882209 / Mike Miller

Case No. D2019-2625

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1241882208, Canada / Contact Privacy Inc. Customer 1241882209, Canada / Mike Miller, United States.

2. The Domain Name and Registrar

The disputed domain names <facebookcryptocurrency.com> and <fbcryptocurrency.com> are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 2019, 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 November 4, 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 November 8, 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 November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. The Respondent sent several email communications to the Center on November 1, 5, and 7, 2019. The Center sent an email to the Parties on November 6, 2019, advising that a suspension could be requested to allow the Parties to explore the possibility of a settlement. The Complainant, however, did not request a suspension of the proceeding, and consequently the Center notified the Parties of the commencement of the panel appointment process on December 6, 2019.

The Center appointed William R. Towns as the sole panelist in this matter on December 16, 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 is a leading and well-known provider of online networking services. The Complainant adopted and has used the mark FACEBOOK as an indicator of source for its services since 2004, and also is commonly known as FB. The Complainant is the owner of trademark registrations for FACEBOOK and FB in the United States and other jurisdictions, including the following:

FACEBOOK - United States, Registration No. 3041791, registered on January 10, 2006 (first use in commerce in 2004);

FACEBOOK − European Union, Registration No. 004535381, registered on June 22, 2011;

FACEBOOK− International Registration No. 1075094, registered on July 16, 2010;

FB – European Union, Registration No. 008981383, registered on August 23, 2011; and

FB – United States, Registration No. 4782235, registered on July 28, 2015.

The Complainant also is the holder of numerous domain names reflecting its FACEBOOK and FB marks.

The Complainant has experienced substantial growth since it began offering its online networking services under the FACEBOOK mark, growing from 1 million active users by the end of 2004 to 2.27 billion users as of September 2018. The Complainant’s website “www.facebook.com” is consistently ranked among most visited websites in the world, and UDRP panels have recognized the Complainant’s FACEBOOK mark as one of the most famous online marks in the world. See Facebook, Inc. v. Franz Bauer, WIPO Case No. D2010-1247; Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004. See also Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan, WIPO Case No. D2015-0614. UDRP panels also have acknowledged the considerable reputation of the Complainant’s FB mark. See, e.g., Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145.

The disputed domain names were registered on November 1, 2017. The disputed domain names no longer resolve to an active website, but previously were used with a website, “www.facebookcryptocurrency.com”, on which the Respondent offered the disputed domain names for sale.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names <facebookcryptocurrency.com> and <fbcryptocurrency.com> are confusingly similar to the Complainant’s FACEBOOK and FB marks, respectively. The Complainant observes that the disputed domain names incorporate the Complainant’s FACEBOOK and FB marks, and maintains that the addition of the term “cryptocurrency” in the disputed domain names does not preclude a finding of confusing similarity under the Policy, noting that the Complainant’s marks are recognizable in the disputed domain names. The Complainant further explains that the Top-Level Domain (“TLD”), in this case “.com”, is generally disregarded when assessing the confusing similarity of the disputed domain names to the Complainant’s marks.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, the Respondent has not been commonly known by either of the disputed domain names, and has not been licensed or otherwise authorized to use the Complainant’s FACEBOOK and FB marks. The Complainant represents that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant contends that the Respondent registered the disputed domain names in order to sell them at a profit derived from the goodwill associated with the Complainant’s marks.

The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant emphasizes that the FACEBOOK and FB marks are highly distinctive and famous around the world, and have acquired considerable brand reputation as well as substantial goodwill. (Citing Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, supra). The Complainant further submits that the Respondent clearly was aware of the Complainant’s FACEBOOK and FB marks when registering the disputed domain names.

The Complainant concludes that the Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant or to one of its competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names. The Complainant denies that the disputed domain names conceivably could have been registered for legitimate speculation.

According to the Complainant, the Respondent’s registration of the disputed domain names constitutes targeting of the Complainant. The Complainant maintains it is unlikely that the Respondent could have registered the disputed domain names for any purpose other than to convey an impression of affiliation between the disputed domain names and the Complainant. The Complainant also asserts that the Respondent’s use of a privacy service to conceal his identity and frustrate the Complainant’s efforts to protect its famous marks against infringement, dilution and cybersquatting constitutes bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, but sent several email communications on November 1, 5, and 7, 2019.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain names, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names <facebookcryptocurrency.com> and <fbcryptocurrency.com> are confusingly similar to the Complainant’s well-known FACEBOOK and FB marks, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

In this case, the Complainant’s FACEBOOK and FB marks are clearly recognizable in the respective disputed domain names.² When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³

Top-Level Domains (TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s well-known FACEBOOK and FB marks. Nevertheless, the Respondent has registered multiple domain names appropriating to the Complainant’s marks and has offered the disputed domain names for sale on the Internet.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

Having regard to all of the relevant circumstances, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s FACEBOOK and FB marks, and there is no indication that the Respondent has been commonly known by either of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. Noting that the Complainant registered the trademarks well before the registration of the disputed domain names and noting the fame of the Complainant’s trademarks, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s FACEBOOK and FB marks in mind when registering the disputed domain names. According to the evidence provided by the Complainant, the disputed domain names previously were used with a website, “www.facebookcryptocurrency.com”, on which the Respondent offered the disputed domain names for sale. The Panel finds that the Respondent has used the disputed domain names to target the Complainant’s marks, and has sought to exploit or otherwise profit from the Complainant’s trademark rights, most likely by selling the disputed domain names to the Complainant or other potential buyers for an amount considerably in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 names <facebookcryptocurrency.com> and <fbcryptocurrency.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: December 18, 2019

¹ See WIPO Overview 3.0, section 1.7.

² See WIPO Overview 3.0, section 1.8 and cases cited therein.

³Id.

⁴See WIPO Overview 3.0, section 1.11.