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, United States / Nikki Baumann, Ireland.
The disputed domain name <facebookaffiliates.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2020, 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 May 6, 2020 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 May 11, 2020.
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 May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020.
The Center appointed Haig Oghigian as the sole panelist in this matter on June 8, 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.
The administrative Panel finds the following as uncontested facts:
- The Complainant is a world-renowned provider of online social-networking services. The Complainant’s services are available in more than 70 languages, through its main website “www.facebook.com”, which ranks as the fourth most visited website in the world, as well as through its mobile app. Since its founding in 2004, the Complainant has attracted more than two billion users worldwide. Consequently, the Complainant enjoys significant global reputation and goodwill.
- The Complainant is the proprietor of numerous registered trademarks containing the word “facebook” in multiple jurisdictions, for example:
United States Trademark No. 3,041,791, FACEBOOK, registered on January 10, 2006, in class 38;
United States Trademark No. 3,122,052, FACEBOOK, registered on July 25, 2006, in class 38;
European Union Trade Mark No. 009151192, FACEBOOK, registered on December 17, 2010, in classes 9, 35, 36, 38, 41, 42 and 45;
European Union Trade Mark No. 005585518, FACEBOOK, registered on May 25, 2011, in classes 35, 41, 42 and 45;
International Trademark No. 1075094, FACEBOOK, registered on July 16, 2010, in classes 9, 35, 36, 38, 41 42 and 45, designating Albania, Australia, Bahrain, Bosnia and Herzegovina, China, Croatia, Egypt, Georgia, Ghana, Iceland, Japan, Kenya, Montenegro, Morocco, North Macedonia, Norway, Republic of Korea, Russian Federation, Serbia, Singapore, Sudan, Switzerland, Turkey, Ukraine and Viet Nam.
- The Complainant uses these trademarks in connection with its social-networking business.
- The Complainant owns many domain names including the word “facebook”, such as:
<facebook.com> created on March 29, 1997;
<facebook.us> created on May 5, 2004;
<facebook.ca> created on January 26, 2005;
<facebook.cn> created on March 4, 2005;
<facebook.biz> created on September 11, 2005;
<facebook.com.br> created on October 27, 2005;
<facebook.it> created on March 6, 2006;
<facebook.es> created on March 9, 2006;
<facebook.hu> created on April 11, 2006;
<facebook.eu> created on April 26, 2006;
<facebook.in> created on July 12, 2006;
<facebook.be> created on December 29, 2006;
<facebook.mx> created on May 14, 2009;
<facebook.pk> created on August 3, 2009;
<facebook.co> created on April 23, 2010; and,
<facebook.ua> created on June 12, 2013;
- The Complainant’s registered rights pre-date the registration of the disputed domain name and enjoy widespread recognition among Internet users around the world.
- The disputed domain name <facebookaffiliates.com>was registered on August 6, 2018. With the exception of a GoDaddy parking page, the disputed domain name does not resolve to an active website.
- On March 27, 2020, the Complainant sent a cease and desist letter to the Respondent, urging it to transfer the disputed domain name within seven days of the letter free of charge. As this letter went unanswered, the Complainant sent a reminder notice on April 3, 2020, which was likewise ignored.
The Complainant claims the disputed domain name is confusingly similar to its own FACEBOOK trademarks and ownership rights, as it incorporates the Complainant’s trademark in its entirety, the only distinction being the addition of “affiliates”. The Complainant claims this addition does not prevent a finding of confusing similarity with its registered rights, as its trademark remains clearly recognizable in the disputed domain name.
Furthermore, the Complainant alleges the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is neither an affiliate nor a licensee of the Complainant. The Respondent does not own any trademarks nor has filed to have any “facebook” or “facebook affiliates” trademarks registered, and it is not known under “facebook affiliates”. The Respondent also appears to be making no use of the disputed domain name, be it for a bona fide offering of goods and services or else.
Finally, the Complainant argues that the registration and use of the disputed domain name by the Respondent is in bad faith. The registration is in bad faith, considering the notoriety of the Complainant’s trademark and the absence of any evidence of bona fide intent in relation to the disputed domain name on the part of the Respondent. The Complainant argues that the use of the disputed domain name is also in bad faith, given: (i) the notoriety of the Complainant’s FACEBOOK trademark; (ii) the Respondent’s failure to produce any evidence of bona fide use; (iii) the Respondent’s use of a privacy service in an attempt to mask its identity; (iv) the use of “affiliates” in conjunction with “facebook”, which carries a high risk of implied affiliation with the Complainant.
The Complainant, therefore, requests that the disputed domain name be transferred to the Complainant accordingly.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the transfer of the disputed domain name may be ordered if the Complainant demonstrates three elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The disputed domain name incorporates the Complainant’s trademark in its entirety. It differs from the Complainant’s trademark only insofar as it adds “affiliates”.
According to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), an addition of that kind does not prevent a finding of confusing similarity, as the FACEBOOK trademark is recognizable within the disputed domain name.
Moreover, past UDRP panels have found comparable domain names to be confusingly similar to trademarks at issue (e.g., Facebook Inc. v. S. Demir Cilingir, WIPO Case No. D2018-2746, in which the disputed domain name <facebookpartner.com> was held to be confusingly similar to the FACEBOOK trademark; La Française des Jeux v. EINFO Pty Limited, WIPO Case No. D2007-1101, in which a variety of disputed domain names containing the word “loto” and another word, <lotoaffiliate.com> being one example, were found to be confusingly similar to the LOTO trademark).
Bearing that in mind, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademarks.
The Complainant affirms it has never authorized nor licensed the Respondent to use the Complainant’s trademark, nor is the Respondent affiliated with the Complainant. No evidence exists to show that (i) the Respondent’s use of the disputed domain name relates to a “bona fide offering of goods or services”; (ii) the Respondent is commonly known by the domain name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Noting the nature of the disputed domain name, the uniqueness of the Complainant’s name, and the fact that the disputed domain name does not have any active website, it negatively reflects on the Respondent’s conduct. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has established itself as a reputable provider of social-networking services. Several UDRP panels have already recognized the fame of the Complainant’s FACEBOOK trademark (see, e.g., Facebook Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547; Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145; Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan, WIPO Case No. D2015-0614). Therefore, the idea that the Respondent was unaware of the Complainant’s activities and the existence of the trademarks and domain names with “facebook” in them, and just happened to register a confusingly similar disputed domain name, is far-fetched.
Pursuant to section 3.3 of WIPO Overview 3.0, the Panel’s finding of bad faith use, within the meaning of paragraphs 4(a)(iii) of the Policy, on the part of the Respondent is justified in light of the following:
(i) the nature of the disputed domain name;
(ii) the distinctiveness and prominence of the FACEBOOK trademark;
(iii) the inactive status of the disputed domain name;
(iv) the Respondent’s attempts to conceal its identity; and,
(v) the Respondent’s failure to challenge the Complainant’s contentions, set out either in the Complaint or in its cease and desist letter.
Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <facebookaffiliates.com> be transferred to the Complainant.
Date: June 22, 2020
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