The Complainant is Facebook Inc., United States of America (“United States”) (“Complainant), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Contact Privacy Inc. Customer 1245138290, Canada / Aung Oo, United States (“Respondent”).
The disputed domain name <facebookshopping.com> is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 Complainant on June 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an email communication from Respondent on June 11, 2020. Complainant filed an amended Complaint on June 15, 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Center received an email communication from Respondent on June 29, 2020, and another two email communications from Respondent on June 30, 2020. Respondent did not submit a formal response. On July 14, 2020, the Center informed the Parties that it would proceed with panel appointment, pursuant to paragraph 6 of the Rules.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 22, 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.
Founded in 2004, Complainant is a leading provider of online social networking services. Following its inception, Complainant expanded by leaps and bounds, going from one million users by the end of its first year, to more than 2.5 billion current monthly active users. Its main website “www.facebook.com”, is currently ranked as the fourth most visited website in the world according to information company Alexa. Complaint, Annex 5.
Complainant is the owner of numerous domain names consisting of or including its registered FACEBOOK trademark. Complaint, Annex 6. Complainant holds numerous trademark registrations of its FACEBOOK trademark in countries and authorities around the world, including trademarks registered with the United States Patent and Trademark Office, registration no. 3041791, dating back to January 10, 2006, with the European Union Intellectual Property Office, registration no. 002483857, dating back to June 13, 2003, an International registration, no. 772524, dating back to December 3, 2001. Complaint, Annex 7.
The disputed domain name was registered on July 26, 2019. The disputed domain name does not currently resolve to an active website. Complaint, Annex 8.
On February 25, 2020, Complainant’s attorneys sent a request to the privacy service listed in the by the registrar requesting the disclosure of the underlying registrant information. A follow up email was sent on March 23, 2020, and again on May 11, 2020. Complaint Annex 10. In both instances, Complainant’s attorneys received no response.
Respondent sent email questions and an offer to settle the matter to the Center, but Complainant stated that since it had already spent the money and time required to get a decision, it wished to proceed to resolution of the matter.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s famous FACEBOOK trademark. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not formally respond to the Complaint, however it sent several email communications as mentioned above.
“A Panel 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.”
Paragraph 4(a) of the Policy directs that the 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; and,
(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.
The disputed domain name consists of Complainant’s famous FACEBOOK trademark with the addition of the English language word “shopping.” It has long been held that the addition of words before or after a trademark in a domain name does not prevent a finding of confusing similarity to the trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has registered a domain name to which no conceivable legitimate use may be put without the permission of the registrant of the famous FACEBOOK trademark. This is similar to the facts in the
well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, the panelist determined as follows:
“The domain name <telstra.org> does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name.
This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that 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 the Respondent to amount to the domain name being used in bad faith.”
In a case such as this one, where it is inconceivable that the disputed domain name can be used for any legitimate purpose without the permission of the trademark holder, and Respondent has neither sought nor received from Complainant permission to use the disputed domain name, the Panel finds that the disputed domain name has been 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, <facebookshopping.com>, be transferred to Complainant.
M. Scott Donahey
Date: July 30, 2020
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