The Complainant is Facebook Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Qusay Ajez, Mr., United Kingdom
The disputed domain name <facebooksell.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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.
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 of the Complaint, and the proceedings commenced on August 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. The Response was filed with the Center on September 16, 2020.
The Center appointed Daniel Kraus as the sole panelist in this matter on September 28, 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 2.5 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 international trademark FACEBOOK under No. 772524, registered on December 3, 2001.
The disputed domain name <facebooksell.com> was registered on January 24, 2015, and resolves to a blank page.
Prior to submitting the Complaint, the Complainant’s representatives sent a letter to the Respondent on July 18, 2020, via the Registrar, then through a direct message. Although the Respondent answered through a very short message (“Hello, I’m the owner for this http://facebooksell.com/ How can I help you?”) it never answered to the cease and desist the letter.
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.
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 cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name does not resolve to an active webpage and, as far as the Complainant is aware, the disputed domain name has never been actively used by the Respondent. Such passive holding of the disputed domain name cannot constitute a bona fide offering of goods and services under the Policy;
(c) the Respondent is not commonly known by the disputed domain name; 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 name based on any legitimate noncommercial or fair use.
As to the registration of the disputed domain name 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 name, considering that in 2015 the Complainant’s social networking service must have been known to the Respondent.
The Complainant further contends that the Respondent’s absence of use of the disputed domain name is abusive, as in particular through the combination of the Complainant’s FACEBOOK trademark together with the term “sell”, the disputed domain name carries a high risk of implied affiliation with the Complainant. Given the Complainant’s strong reputation and the nature of the disputed domain name, there simply cannot be any actual or contemplated good faith use of the disputed domain name as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Respondent replied to the Complainant’s contentions as follows:
“I respectfully reject the allegation made by the complainant. I have owned this domain for several years and I am always comply [sic] with regulations. This domain is part of an ongoing project which I have invested for years.”
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 name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name 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 name reproduces the Complainant’s trademark in its entirety. The addition of the term “sell” does 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 name. These circumstances are:
(i) before any notice 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, 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 name, 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 name. 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 responding bluntly 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 name.
The Respondent has been passively holding the disputed domain name for five years, which resolves to a blank page. Not the slightest element of proof of the existence of a legitimate interest has been put forward by the Respondent. The mere holding of a blank page cannot be considered a bona fide offering of goods or services under the Policy. See, for example, Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.
Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well‑known trademark with an additional term, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been sufficiently rebutted by the Respondent to avoid such a finding. The second element of the Policy has also been met.
The present case presents the following circumstances which indicate bad faith registration and use of the disputed domain name.
Indeed the Respondent is passively holding the disputed domain name, which resolves to a blank page. However, such passive holding of the disputed domain name does not preclude a finding of bad faith, given the overall circumstances of the case. According to WIPO Overview 3.0, section 3.3, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists need to look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the 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.” See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.
In the present case, three of the abovementioned factors are applicable:
(i) The Complainant’s FACEBOOK mark is highly distinctive and is well known internationally. As a result of its longstanding and widespread use since 2004, the FACEBOOK trademark has become exclusively associated with the Complainant. When viewing the disputed domain name, Internet users are likely to be confused and assume that the disputed domain name is somehow affiliated or otherwise endorsed by the Complainant.
(ii) Despite the Complainant’s efforts to contact the Respondent prior to the submission of the present Complaint, the Respondent has failed to engage with the Complainant or to produce any evidence of actual or contemplated good-faith use of the disputed domain name, either before the commencement of the present proceeding or in response to the Complaint.
(iii) The combination of the Complainant’s FACEBOOK trademark together with the term “sell”, carries a risk of implied affiliation with the Complainant. It is difficult to conceive a bona fide use that the Respondent could make of the disputed domain name that would not result in creating a misleading impression of association with the Complainant.
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 name 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 name <facebooksell.com> be transferred to the Complainant.
Date: October 12, 2020
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