Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Contact Privacy Inc. Customer 0136898918, 0136898919, 0136898920 / Brian Frantz, Ticketleap, United States.
The disputed domain names <facebookevents.net>, <facebooktickets.com>, and <facebooktickets.net> are registered with Tucows Inc. (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 names. On the same day, 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 Complainant on September 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 14, 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 September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 26, 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.
Complainant is the world’s leading provider of online social networking services. Launched in 2004, Facebook now has over 2 billion monthly active users. Its main website, “www.facebook.com”, is currently ranked one of the top ten most visited websites in the world, and in the United States, where Respondent lists an address of record.
Complainant owns several registrations for the FACEBOOK mark, including in the United States where Respondent lists his address of record. These include United States Registration No. 3041791 (registered January 10, 2006); European Union Registration No. 004535381 (registered June 22, 2011), and International Registration No. 1075807 (registered July 16, 2010).
According to the WhoIs database, the disputed domain names <facebookevents.net>, <facebooktickets.com>, and <facebooktickets.net> appear to have been registered by Respondent on June 13, 2007.1 Each of the disputed domain names is associated with a Uniform Resource Locator (“URL”) that redirects to “www.ticketleap.com”, which offers a service for online ticket sales. Respondent has no affiliation with Complainant, nor any license to use its marks.
Complainant contends that (i) the disputed domain names <facebookevents.net>, <facebooktickets.com>, and <facebooktickets.net> are identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.
Specifically, Complainant contends that it owns the FACEBOOK mark, which is “highly distinctive” and “famous throughout the world.” In this regard, Complainant notes that the FACEBOOK brand was ranked as the 14th most valuable brand globally by Interbrand for 2019. Complainant contends that Respondent has incorporated Complainant’s well-known FACEBOOK mark into the disputed domain names, and merely added the generic or descriptive terms, “events” or “tickets”. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain names, and rather has registered and is using them in bad faith, having simply acquired the disputed domain names for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions.
The Panel must first determine whether the disputed domain names <facebookevents.net>, <facebooktickets.com>, and <facebooktickets.net> are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. The disputed domain names incorporate Complainant’s FACEBOOK mark and merely add the descriptive terms, “events” or “tickets”, which users may identify as auxiliary services to Complainant’s well-known social networking services.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (<microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (<walmartbenfits.com>); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (<ge-recruiting.com>).
The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest”, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, the disputed domain names have been used to redirect to “www.ticketleap.com”, which offers a service for online ticket sales. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
A number of prior UDRP panels have found Complainant’s marks to be extremely well known. See, for example, Facebook, Inc. v. Emma Boiton, WIPO Case No. D2016-0623 (finding FACEBOOK to be “one of the most famous online trademarks in the world”); and Facebook Inc., et. al. v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150 (transferring, inter alia, <facebgok.com>, <facebks.com>, <facebokep.com>, <faceboki.com>, <facebuki.com>, <facetagram.com>, <fbooklogin.com>, <thefacebok.com>). Due to the extreme renown of Complainant’s FACEBOOK mark, the Panel finds strong evidence that Respondent was aware of Complainant’s rights when it registered the disputed domain names.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph (4)(a)(iii) 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 <facebookevents.net>, <facebooktickets.com> and <facebooktickets.net> be transferred to Complainant.
Date: October 30, 2020
1 Although the Registrar confirmed the expiration dates of the disputed domain names, it did not confirm the specific registration dates.
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