The Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Agi Hadarits, Hungary / Super Privacy Service LTD c/o Dynadot / Pending Renewal or Deletion, United States.
The disputed domain names <facebookclothing.com> and <facebookshoes.com> are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2020. On August 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 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 August 18, 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 August 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 17, 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 Complainant was founded in 2004 and today is one of the leading providers of online social networking services counting over 2.6 billion monthly active users and having its “www.facebook.com” website ranked as the 5th most visited website in the world.
The Complainant is the owner, amongst others, of the trademark FACEBOOK registered in the United States under No. 3041791, registered on January 10, 2006 (Annex 8 to the Complaint).
The disputed domain names <facebookclothing.com> and <facebookshoes.com> were registered on July 31, 2019, and presently resolve to parked pages displaying pay-per-click (PPC) links.
Prior to submitting the Complaint, the Complainant’s representatives sent a letter to the Respondent on July 17, 2020, which the Respondent did not respond. (Annex 10 to the Complaint).
The Respondent previously owned other domain names incorporating the FACEBOOK trademark, namely
<facebookdepot.club>; <facebooklike.club>; <facebookmart.club>; <facebookshop.club>; <facebookshops.club> and <facebookstore.club> (Annex 11 to the Complaint).
The Complainant asserts to be the world’s leading provider of online social networking services, actively promoting and using the FACEBOOK trademark throughout the world.
According to the Complainant, the Respondent’s telephone number listed in the WhoIs records of the disputed domain names was also used by another registrant with the same surname, Geza Tamas Hadarits, who has been found of bad faith registration and use and recently ordered to transfer the domain names <facebookfashion.com> and <facebookgoods.com> in Facebook, Inc. v. Geza Tamas Hadarits, Gezahadarits, WIPO Case No. D2020-1179.
The Complainant further asserts that an online search revealed that Geza Hadarits used to be the registrant of, amongst dozens of domain names incorporating the Complainant’s trademark, <bestfacebook.bid>; <bestfacebook.website>; <facebookcom.cloud>; <facebookcom.net>; <facebookcom.online>; <facebook-com.online>; <facebookcom.site>; <facebookcom.store>; <facebookcom.website>; <facebookdress.bid>; <facebookfashion.info>; <facebookgoods.info>; <facebookluxury.com> and <fashion-facebook.com> (Annex 13 to the Complaint).
The disputed domain names are, according to the Complainant, confusingly similar to the Complainant’s notorious trademark, creating a likelihood of confusion, given that the addition of the generic terms “clothing” and “shoes” do not prevent a finding of confusing similarity given that the Complainant’s trademark remains clearly recognizable in the disputed domain names.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that:
(a) the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the FACEBOOK trademark or any variation thereof;
(b) the Respondent’s use of the disputed domain names in connection with parked pages displaying PPC links cannot constitute a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy given that the Respondent is seeking to profit from the Complainant’s goodwill and renown to attract Internet users to its websites for financial gain;
(c) the Respondent is not commonly known by the disputed domain names; and
(d) the Respondent has not come forward in reply to the Complainant’s cease and desist letter to assert any claim of rights or legitimate interests in the disputed domain names based on any legitimate noncommercial or fair use.
As to the registration of the disputed domain names in bad faith the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering that in 2019 the Complainant’s social networking service had already amassed over 2 billion users.
The Complainant further contends that the Respondent’s use of the disputed domain names is clearly intended for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy, as they are pointing to an
advertising website displaying PPC links, thus seeking to capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its websites.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.
The Complainant has established rights in the FACEBOOK trademark duly registered in several countries around the world (Annex 8 to the Complaint).
The Panel finds that the disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of the terms “clothing” and “shoes” do not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.7).
The first element of the Policy has therefore been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from default as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Indeed the Respondent is using the disputed domain names in connection with parked webpages displaying PPC links what cannot be considered here a bona fide offering of goods or services under the Policy.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met.
This case presents the following circumstances which indicate bad faith registration and use of the disputed domain names:
a) the Complainant’s trademark is registered worldwide and is well known;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain names;
c) the Respondent is probably linked to the respondent of the previous UDRP precedent that ordered the transfer of the domain names <facebookfashion.com> and <facebookgoods.com> in Facebook, Inc. v. Geza Tamas Hadarits, Gezahadarits, supra, what indicates that the Respondent knew of the Complainant’s rights over the FACEBOOK trademark;
d) the Respondent gave a false physical address to which the Center’s communications could not be delivered; and
e) the absence of reply to the cease and desist letter sent by the Complainant prior to this procedure.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.
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 names, <facebookclothing.com> and <facebookshoes.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: September 30, 2020
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