WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Krzysztof Wazny

Case No. D2019-2984

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, Unites States / Krzysztof Wazny, Poland.

2. The Domain Name and Registrar

The disputed domain name <facẹbook.com> [<xn--facbook-ts4c.com>] (the “Domain Name”) 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 December 3, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day 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 December 9, 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 December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020.

The Center appointed Nicholas Smith as the sole panelist in this matter on January 13, 2020. 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 leading provider of online social networking services. The Complainant was founded in 2004 and operates primarily from its website at “www.facebook.com” (the “Complainant’s Website”) where it has 2.37 billion monthly active users. The Complainant’s Website is currently ranked the 5th most visited website in the world.

The Complainant is the owner of trade mark registrations in various jurisdictions (including the European Union and United States) for marks consisting of the word “facebook” (the “FACEBOOK Mark”) including United States registration No. 3122052 registered on July 25, 2006.

The Domain Name was registered on March 30, 2018. At the time the Complaint was prepared, the Domain Name did not, and there is no evidence that it ever had, resolve to an active webpage. The Domain Name <xn--facbook-ts4c.com> translates as the internationalized domain name (“IDN”) <facẹbook.com>. Prior UDRP panels have found IDNs and their Punycode translations to be equivalent. See, for instance, Württembergische Versicherung AG v. Emir Ulu, WIPO Case No. D2006-0278 (finding that the domain name “<xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to <württembergische‑versicherung.com>”).

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is confusingly similar to the Complainant’s FACEBOOK Mark;

(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the FACEBOOK Mark, being the owner of trade marks registered in various jurisdictions for the FACEBOOK Mark. The Domain Name, translated as <facẹbook.com>, is almost indistinguishable from the FACEBOOK Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the FACEBOOK Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name has never been used in any active way.

The Respondent has registered and uses the Domain Name in bad faith. Given the fame of the FACEBOOK Mark and the nature of the Domain Name, being almost identical to the FACEBOOK Mark, there are no plausible circumstances under which the Respondent could legitimately use the Domain Name other than in bad faith. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the FACEBOOK Mark, having registrations for the FACEBOOK Mark as a trade mark in the United States and other jurisdictions.

Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the FACEBOOK Mark since it wholly incorporates the FACEBOOK Mark, other than replacing the “e” with a “ẹ” which creates a minor distinction that would be easy for an Internet user to overlook. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any 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 your 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 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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating FACEBOOK Mark or a mark similar to the FACEBOOK Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name 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 registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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.

The Panel finds on the balance of probabilities that the Respondent was aware of the Complainant and its reputation in the FACEBOOK Mark at the time the Respondent registered the Domain Name. The FACEBOOK Mark is a mark that is ubiquitous online, with 2.37 billion users. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that consists of a minor misspelling of the FACEBOOK Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the FACEBOOK Mark.

The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name for 18 months, the nature of the Domain Name itself, being almost identical to a distinctive and very well-known mark, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that is confusingly similar to the FACEBOOK Mark and the lack of any apparent legitimate reason for the registration and use of the Domain Name, that the Domain Name is most likely being held pending use in a bad faith manner that would take advantage of confusion between the Domain Name and the FACEBOOK Mark. As such, Panel finds that the passive holding of the Domain Name does not prevent a finding of bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <facẹbook.com> [<xn--facbook-ts4c.com>] be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: January 15, 2020