WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Si Chuan Shu Zhou Shen Mu Shang Mao You Xian Gong Si (四川蜀州神木商贸有限公司)

Case No. D2020-1656

1. The Parties

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

The Respondent is Si Chuan Shu Zhou Shen Mu Shang Mao You Xian Gong Si (四川蜀州神木商贸有限公司), China.

2. The Domain Name and Registrar

The disputed domain name <facebookshop.store> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On June 30, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 1, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 10, 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 provides online social networking services. Its main website at “www.facebook.com” currently has over 2.5 billion monthly active users. The Complainant holds multiple registrations for the trademark FACEBOOK, including United States trademark registration number 3,041,791, registered on January 10, 2006 with a claim of first use in commerce in 2004, specifying services in international class 38; and Chinese trademark registration number 5251162, registered on September 21, 2009, specifying services in class 38. Both those trademark registrations remain current.

The Respondent is a Chinese business and trading company. According to evidence submitted by the Complainant, the Respondent has previously registered other domain names including <fingerlingsbabymonkeyus.com>, <swarovski.ltd>, and <swarovskii.cn>.

The disputed domain name was registered on October 18, 2019. It previously resolved to a website in English offering for sale National Football League-branded clothing. The contact telephone number was a United States number and prices were displayed in USD. The disputed domain name now resolves to a website in Chinese, and partly in Japanese, titled “Aiko Mall”, offering for sale a range of goods, including fashion, cosmetics, travel accessories, and children’s products. Prices are displayed in HKD.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark. The disputed domain name only adds the word “shop” and the generic Top-Level Domain (“gTLD”) “.store”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is associated with a shopping website. This use clearly targets the Complainant’s trademark for commercial purposes. The Respondent is not a licensee of the Complainant, nor has it been otherwise authorised or allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world. The fact that Facebook is currently blocked in mainland China is of little consequence in relation to the Respondent’s presumed knowledge of the Complainant and its trademarks, noting the widespread media coverage of the Complainant in China. The Complainant therefore submits that the Respondent had actual and constructive knowledge of the Complainant and its rights at the time of registration of the disputed domain name and thus registered the disputed domain name in bad faith. The Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website, as set out in paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name previously pointed to a website in English; the disputed domain name consists of Latin characters and includes an English word; and, translation of the Complaint into Chinese would result in additional expenses for the Complainant and unnecessary delay.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English and that the Respondent previously used the disputed domain name in connection with a website in English, from which it is reasonable to infer that the Respondent is familiar with that language. The Respondent has not expressed any interest in commenting on the language of the proceeding, responding to the Complainant’s contentions, or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

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

(ii) the 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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the FACEBOOK mark.

The disputed domain name wholly incorporates the FACEBOOK mark. The disputed domain name adds the word “shop” but this element is not capable of dispelling confusing similarity between a domain name and a trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. The trademark remains clearly recognizable within the disputed domain name.

The disputed domain name also includes a gTLD (“.store”), which is a technical requirement of domain name registration. Such a gTLD may be disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here. See Société des Produits Nestlé S.A. v. Wen Jianhui (温建辉), WIPO Case No. D2019-3181.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

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

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, the disputed domain name, which is confusingly similar to the Complainant’s FACEBOOK mark, resolves to a shopping website. The Complainant submits that the Respondent is not a licensee of the Complainant, nor has it been otherwise authorised or allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. Accordingly, the Panel does not consider the Respondent’s use of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Si Chuan Shu Zhou Shen Mu Shang Mao You Xian Gong Si (四川蜀州神木商贸有限公司)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a shopping website. That is not a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] website or location.

With respect to registration, the disputed domain name was registered in 2019, years after the registration of the Complainant’s FACEBOOK trademark, including in China where the Respondent is located. FACEBOOK is a coined term with no other meaning besides its trademark meaning. The disputed domain name wholly incorporates the FACEBOOK trademark with no additional element besides the dictionary word “shop” and the gTLD “.store”. Evidence submitted by the Complainant shows that its main website is the top result of a search for “facebook” in the Baidu search engine. That website is also accessible in mainland China, where the Respondent is located, via virtual private networks. This all gives the Panel reason to infer that the Respondent was aware of the Complainant and its trademark at the time that it registered the disputed domain name. That inference is confirmed by the fact that the Respondent’s corporate name and contact email address are associated with other domain names that, like the disputed domain name, consist of a third party trademark and a TLD. Therefore, the Panel finds that the Respondent deliberately chose to register the Complainant’s FACEBOOK trademark in the disputed domain name in bad faith.

With respect to use, the Complainant has provided evidence that the Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s FACEBOOK trademark, in connection with a shopping website. Nothing in the website content indicates any reason to use the disputed domain name other than to confuse consumers into believing that it had some connection to the Complainant. Accordingly, the Panel finds that the Respondent was using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 name <facebookshop.store> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: August 24, 2020