WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Marios Gregoriou

Case No. D2020-1275

1. The Parties

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

Respondent is Marios Gregoriou, United States.

2. The Domain Name and Registrar

The disputed domain name <facebookcreditcard.com> 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 May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2020.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on June 30, 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

Complainant Facebook, Inc. was founded in 2004, and has registered the FACEBOOK trademark in the United States, the European Union, and numerous other jurisdictions. These trademark registrations date back to at least November 16, 2004 (see, for example, United States Reg No. 3122052). Complainant also has registered several domain names consisting of the FACEBOOK mark followed by various generic Top-Level Domains (“gTLDs”) or country code Top-Level Domains (“ccTLDs”). The disputed domain name <facebookcreditcard.com> was registered on October 4, 2018. At the time the Complaint was filed, the disputed domain name resolved to a web page that stated, among other things:

“This Web page is parked FREE, courtesy of GoDaddy

Get This Domain”

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the “world's leading provider of online social-networking services”, with approximately 2.5 billion monthly active users and 1.66 billion daily active users worldwide. Complainant asserts that the “www.facebook.com” website is the 4th most visited website in the world, and that the FACEBOOK trademark “is currently one of the most famous online trade marks in the world”, recently ranking 14th in Interbrand's Best Global Brands report. Complainant asserts that its official Facebook page on Facebook has over 213 million likes, and that Facebook has 13.5 million followers on Twitter. Complainant notes that “[a]t the time of filing [the Complaint], the [disputed domain name] resolves to a GoDaddy parking page provided by the Registrar. Complainant is not aware of Respondent making any other substantive use of the Domain name”. Complainant sent a cease-and-desist letter to Respondent on April 1, 2020 (regarding the disputed domain name as well as regarding <facebookcredit.us>), and sent a follow-up email to Respondent on April 7, 2020. Respondent did not respond to either communication. Complainant asserts that it has filed a parallel ccTLD complaint regarding the <facebookcredit.us> domain. Complainant thus asserts that it has rights in the FACEBOOK trademark, and that the disputed domain name is confusingly similar to its FACEBOOK trademark. Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, in that Respondent is not a licensee of Complainant, Respondent is not affiliated with Complainant, Complainant has not granted any authorization for Respondent to use the FACEBOOK trademark, Respondent has not used the disputed domain name in connection with an active website, Respondent did not reply to Complainant’s cease-and-desist letter with any evidence of having made demonstrable preparations to use the disputed domain name, Respondent’s actual name bears no resemblance to the disputed domain name, to Complainant’s knowledge Respondent has not secured any trademark registrations for the disputed domain name, and “the inclusion of the term ‘credit card’ alongside Complainant's FACEBOOK trade mark carries with it a high risk of implied affiliation with Complainant”.

Finally, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith, in that Complainant has a strong trademark, Respondent “could not credibly argue that he did not have prior knowledge of Complainant's trade marks at the time he registered the [disputed domain name] in October 2018, at which time Complainant's social network had already amassed over 2 billion users”, Respondent has not come forward with any evidence of bona fide intent with respect to the disputed domain name, the use of “credit card” alongside Complainant’s trademark allegedly risks implied affiliation with Complainant, and Respondent allegedly has registered other domain names corresponding to Complainant’s trademark as well as trademarks of others (e.g., <facebookcredit.us>, <blackberrymobileupdates.com>, and <vwonline.com>).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

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

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

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

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.

Complainant’s trademark registrations in the Annexes to the Complaint demonstrate that Complainant has rights in the FACEBOOK mark.

The disputed domain name consists of the FACEBOOK mark, plus “credit card” (without spacing), plus the “.com” gTLD. Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Thus, the addition of “credit card” and the “.com” gTLD does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark on the facts of this case. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”); WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”); Facebook Inc. v. Nicolas Kokkalis, WIPO Case No. D2020-1201 (holding <facebookdeals.com> is confusingly similar to FACEBOOK); Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Nikki Baumann, WIPO Case No. D2020-1103 (holding <facebookaffiliates.com> is confusingly similar to FACEBOOK).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.

“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 [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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.” Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name <facebookcreditcard.com>. Rather, Complainant asserts that: Respondent is not authorized to use the FACEBOOK trademark, Respondent has not used the disputed domain name in connection with an active website, Respondent did not reply to Complainant’s cease-and-desist letter with any evidence of having made demonstrable preparations to use the disputed domain name, Respondent’s actual name bears no resemblance to the disputed domain name, to Complainant’s knowledge Respondent has not secured any trademark registrations for the disputed domain name, and “the inclusion of the term ‘credit card’ alongside Complainant's FACEBOOK trade mark carries with it a high risk of implied affiliation with Complainant”.

These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See, e.g., WIPO Overview 3.0section 2.5.1 (“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. … [C]ertain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, or which are not obviously critical (e.g., <okidataparts.com>, <nascartours.com>, <covancecampaign.com>, or <meissencollector.com>), may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests.”); Facebook Inc. v. Nicolas Kokkalis, WIPO Case No. D2020-1201 (“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. Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.”); Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Nikki Baumann, WIPO Case No. D2020-1103 (“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.”); Facebook, Inc. v. Juan Acosta, WIPO Case No. D2020-1101 (“The Panel concludes the Respondent was aware of the Complainant and the Complainant’s FACEBOOK mark when registering the dispute domain names. Having regard to the relevant circumstances, the Panel finds that the Respondent has neither 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 other 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 mark, and there is no indication that the Respondent has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record 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.”).

Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or

(ii) [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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainant asserts that it has a strong trademark and that Respondent “could not credibly argue that he did not have prior knowledge of Complainant's trade marks at the time he registered the [disputed domain name] in October 2018, at which time Complainant's social network had already amassed over 2 billion users”; that Respondent has not come forward with any evidence of bona fide intent with respect to the disputed domain name; that the use of “credit card” alongside Complainant’s trademark allegedly risks implied affiliation with Complainant; and that Respondent allegedly has registered other domain names corresponding to Complainant’s trademark as well as trademarks of other third parties (e.g., <facebookcredit.us>, <blackberrymobileupdates.com>, and <vwonline.com>). Respondent has not sought to controvert these allegations.

There is some evidence of a possible intent to sell the disputed domain name as set forth in paragraph 4(b)(i) of the Policy. The parking page for the disputed domain name stated “Get This Domain” and linked to a page where the Registrar would attempt to purchase the domain for the visitor. Respondent could have replaced this page with something else and apparently did not do so. This provides some evidence of bad faith. Ocwen Financial Corporation v. David Goad / S Zoeller / Domain Administrator, See PrivacyGuardian.org, WIPO Case No. D2018-2578 (finding bad faith where “the Domain Name has been linked to a website offering the Domain Name for sale, or alternatively, indicating that the Domain Name is parked for free. Even if this content was automatically generated by the Registrar.”). Cf. WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).”).

Complainant also asserts that Respondent has engaged in a pattern of registering third-party trademarks, such as <facebookcredit.us>, <blackberrymobileupdates.com>, and <vwonline.com>. While this unrebutted allegation tends to indicate that paragraph 4(b)(ii) of the Policy may be satisfied, none of these domains is registered to Respondent at this time, and the record in this case does not contain any further information about the past WhoIs data for these domains. Accordingly, it is difficult to weight this allegation heavily.

On the other hand, evidence submitted by Complainant and not rebutted by Respondent suggests that Complainant’s FACEBOOK mark is well known, and that Respondent likely has created confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product or service on Respondent’s website, as contemplated by paragraph 4(b)(iv) of the Policy. It is not obvious what other use could be intended by the disputed domain name other than a credit card from, sponsored by, affiliated with, or endorsed by Complainant. The registration of a domain name with knowledge of a trademark and the intent to trade on the goodwill of the trademark is evidence of bad faith. Facebook Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 (“The Panel concludes that due to the worldwide reputation of the FACEBOOK trademark and its associated services, the Respondent must have been aware of the Complainant’s trademark when it registered and used the disputed domain names. The Respondent clearly intended to attract users to its websites through the unauthorized use of the famous FACEBOOK trademarks as the primary and/or dominant element of the disputed domain names. The Respondent is using many of the disputed domain names in association with websites which offer the disputed domain names for sale, or transfer, for purposes of monetary gain. Others of the disputed domain names are essentially passively held, which, as has been well established, does not prevent a finding of bad faith use. In the absence of any evidence to the contrary, the Panel finds that the disputed domain names were registered and used in bad faith.”); Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145 (“The longstanding and public use of the FACEBOOK and FB Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant's rights. ... Thus, the timing of the Respondent's registration and use of the Disputed Domain Names indicates that they were in bad faith. ... Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. ... Finally, the fact that the Respondent did not respond to the Complainant's cease and desist letter is additional evidence of bad faith.”); WIPO Overview 3.0, section 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”).

The fact that the disputed domain name is now being passively held does not prevent a finding of bad faith. As noted in WIPO Overview 3.0, section 3.3, “factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. On the facts of this case, these factors also weigh in favor of a finding of bad faith.

Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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 name <facebookcreditcard.com> be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: July 14, 2020