WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Fernando Becker

Case No. D2020-2909

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Fernando Becker, Brazil.

2. The Domain Name and Registrar

The disputed domain name <updatefb.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.

The Center appointed Cherise Valles as the sole panelist in this matter on January 18, 2021. 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, Facebook, Inc., commonly known as “FB”, is the world’s leading provider of online social networking services. Founded in 2004, Facebook allows Internet users to share information and stay connected with friends and family via its website available at “www.facebook.com”. Since its launch in 2004, Facebook has rapidly developed and currently has more than 2.5 billion monthly active users and 1.66 billion daily active users on average worldwide. Its main website “www.facebook.com” is currently ranked as the 4th most visited website in the world and 16th in Brazil (where the Respondent is based), according to the information company, Alexa. Facebook is also available for mobile devices and is ranked as the 4th most downloaded application in the world and 8th in Brazil as per App Annie’s Top Apps Ranking in 2020.

Facebook has developed considerable reputation and goodwill worldwide in both its services and brands. The term FB commonly refers to Facebook and has been used by many international newspapers as early as in 2011, such as Generation FB, TheNew York Times dated June 23, 2011 and Who are the most social publishers on the web?, The Guardian dated October 3, 2013.

Facebook also owns trade mark registrations in the term FB throughout the world. Such trade mark registrations include but are not limited to the following:

- United States of America Trade mark No. 4659777, FB, registered on December 23, 2014 (first use in commerce in April 2014);
- European Union Trade mark No. 008981383, FB, registered on August 23, 2011;
- Canadian Trade mark No. TMA929282, FB, registered on February 18, 2016.

Reflecting its global reach, Facebook is the owner of numerous domain names consisting of its FB trade mark, for instance, <fb.com>, <fb.am> (Armenia), <fb.asia> (Asia), <fb.bs> (Bahamas), <fb.co> (Colombia), <fb.fr> (France), <fb.im> (Isle of Man), <fb.ie> (Ireland), <fb.me> (Montenegro), <fb.pe> (Peru), <fb.pt> and <fb.com.pt> (Portugal), <fb.lk> (Sri Lanka), and <fb.uk> and <fb.co.uk> (United Kingdom).

The term FB is strongly associated with the Complainant, as shown by the fact that the top results obtained by entering FB on Google search engine at “www.google.com” and “www.google.com.br“ refer to the Complainant (see Annex 9).

Prior UDRP panels have recognized the strength and renown of the Complainant’s FB trade mark, and have ordered respondents to transfer all disputed domain names to the Complainant. See, for example, Facebook, Inc. and Instagram LLC v. Adam Szulewski, WIPO Case No. D2016-2380 (<buyfblikee.top>, <buyfblikesandfans.top>, <buyfblikes.top> et al., registered in 2016).

On September 23, 2020, the Complainant’s lawyer sent a cease and desist letter both by email and by registered mail to the Respondent, asserting the Complainant’s trade mark rights and requesting the transfer of the disputed domain name. This letter was first sent to the Respondent’s email address listed in the WHOIS but could not be delivered. The Complainant’s lawyer then sent the letter on the same day to an email address which appears to be associated with the Respondent based on the Complainant’s research. Copies of the cease and desist letter sent to the Respondent and of the notification of the delivery failure are provided at Annex 13.

The Respondent never replied to the Complainant’s cease and desist letter.

The disputed domain name <updatefb.com> was registered on August 4, 2020. The disputed domain name previously resolved to a website mimicking the Complainant’s official log-in page in Portuguese, inviting the Complainant’s users to provide their account credentials. The disputed domain name currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered FB trademarks, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s fraudulent use of the disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trade mark in which it has rights. The disputed domain name incorporates the FB trade mark in its entirety with the addition of the term “update”. Given the Complainant’s trade mark registrations as detailed above, the Complainant has established its trade mark rights in the term FB for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s trade mark FB, which is commonly used to refer to Facebook, is clearly recognizable and is the core element of the disputed domain name. It is well established in previous UDRP decisions that, where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms, such as “update”, would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the extension into account. See WIPO Overview 3.0 at section 1.11.1, which states that the “applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that the complainant must establish a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to respondent. See The American Automobile Association, Inc. v. PrivacyProtect.org/Domain Tech Enterprises, et al., WIPO Case No. D2011-2202, noting that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant submits that there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s FB trademarks in any manner whatsoever, including in, or as part of, the disputed domain name.

In paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, 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.

Prior to its suspension by the Registrar at the Complainant’s request, the disputed domain name was used by the Respondent to point to a website mimicking the Complainant’s log-in page, where unsuspecting Facebook users were invited to log in by providing their account credentials (see Annex 11). The Respondent was apparently thereby using the disputed domain name in connection with a phishing scheme that sought to illegitimately collect the account information of Facebook users, with malicious intent for commercial gain. Such use of the disputed domain name can by no means be considered as a bona fide offering of goods or services under the Policy. See Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461, which found that there was no bona fide offering of goods or services where the respondents were using the disputed domain names for a password recovery and technical support scam operation.

Furthermore, the website previously associated with the disputed domain name had the same “look and feel” as Facebook’s official website by displaying the Complainant’s distinctive logo and featuring the same blue color theme. Such copying cannot constitute a bona fide offering of goods or services as the Respondent deliberately designed the associated website to give the false impression to Internet users that they were being redirected to the legitimate Facebook website. See, Pandora Jewelry, LLC v. David Lee, WIPO Case No. D2010-0068 (where the panel found that the respondent’s website, which imitated the look and feel of the website owned by the complainant’s affiliate company, did not confer any rights or legitimate interests).

The Complainant asserts that the Respondent cannot legitimately claim that he is commonly known by the disputed domain name, in accordance with paragraph 4(c)(ii) of the Policy. It is understood that the initials of the Respondent’s name (i.e., Fernando Becker – if it is in fact the registrant’s real name) are “FB”, which may prima facie support a finding of rights or legitimate interests under the Policy. However, UDRP panels will also typically assess whether there is a general lack of other indicia of cybersquatting (WIPO Overview 3.0, section 2.3). In this case, the Respondent’s previous ownership of another two domain names incorporating the Complainant’s distinctive FACEBOOK trade mark, i.e., <fazer-facebook.com> and <fotosfacebook.com.br>, (see Annex 12) indicates the Respondent’s past history of abusive domain name registrations and suggests that the disputed domain name is likely being used for cybersquatting or other abusive purposes. The fact that the disputed domain name was used to point to a fake Facebook log-in page shortly after its registration moreover supports the Complainant’s assertion. Furthermore, the use of the disputed domain name in connection with a phishing scheme cannot give rise to any legitimate interests in the disputed domain name per se.

Given these facts, the Respondent cannot assert that he has made, or is currently making, legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, the fact that the disputed domain name falsely suggests affiliation with the Complainant by incorporating the Complainant’s FB trade mark so as to confuse Internet users will generally exclude any possible fair use as per section 2.5 of the WIPO Overview 3.0. The Respondent has apparently used the disputed domain name in connection with a phishing scam, thereby excluding therefore any legitimate noncommercial or fair use of the disputed domain name.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. WIPO Overview 3.0, section 3.1.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The Complainant asserts that paragraphs 4(b)(ii) and 4(b)(iv) of the Policy are of particular relevance in this matter, although there are other factors which strongly indicate the Respondent’s bad faith.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. UDRP panel have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Complainant’s FACEBOOK and FB trade marks are famous throughout the world and the latter is commonly used to refer to Facebook. This is demonstrated by the fact that the top results obtained by entering FB on Google search engine at “www.google.com” and “www.google.com.br” refer to the Complainant (see Annex 9).

It would therefore be extremely difficult for the Respondent to argue that he did not have knowledge of the Complainant’s FB trade mark at the time of registration of the disputed domain name in August 2020. See, for instance, Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145 (<genfb.com> and <genfb.net>, registered in 2015 and 2016): “The longstanding and public use of the FACEBOOK and FB Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights”.

The fact that the disputed domain name was apparently used in connection with a phishing scheme targeting Facebook users shortly after its registration and that the Respondent’s previous registration of another two domain names targeting the FACEBOOK trade mark (i.e., <fazer-facebook.com> and <fotosfacebook.com.br>) demonstrates to the Respondent’s prior knowledge of the Complainant at the time of registration.

The Respondent thus registered the disputed domain name in full knowledge of the Complainant’s rights. Prior UDRP panels have held that actual and constructive knowledge of a complainant’s rights at the time of registration of a domain name constitutes strong evidence of bad faith. See Playboy Enterprises International, Inc. v. John Hanley, WIPO Case No. D2014-0618 (<mrplayboy.com>): “Prior panels have found that knowledge, actual or inferred, of a strong mark is evidence of registration in bad faith.”

In addition, the Respondent deliberately chose to conceal his identity by means of a privacy protection service (see Annex 1). This is another indication of the Respondent’s intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. Indeed, given the overall circumstances of this case (in particular the Complainant’s strong reputation worldwide and the Respondent’s use of the disputed domain name in connection with a phishing scheme), there is no reason why the Respondent would need to protect his identity by means of a privacy shield other than to block or intentionally delay disclosure of his true identity. See section 3.6 of the WIPO Overview 3.0 and also Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696:

“The use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is also consistent with an inference of bad faith in registering and using the Domain Name, given the other evidence in this case of evasive and irresponsible conduct.”

The fact that the Respondent’s email address used to register the disputed domain name no longer functions also indicates bad faith (see Annex 13). See Banco Original do Agronegócio S.A. v. Private Registration, WIPO Case No. D2013-2037 (<bancooriginal.com>):

“The Panel notes that providing false or inaccurate contact information when registering a domain name can be evidence of bad faith registration and use […]. As further detailed in paragraph 4 above, it appears that the contact information for the Respondent currently held by the Registrar is inaccurate. The Panel believes that there is a possibility that the Respondent provided false contact information to the Registrar or purposefully chose not to update its contact information to conceal the true identity of the underlying registrant.”

In addition, the Complainant submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering not only the disputed domain name, but also other domain names targeting the Complainant’s and third party trademarks, i.e., <fazerfacebook.com>, <fotosfacebook.com.br> and <cnnvideos.com> (see Annex 12 to the Complaint), for the purpose of preventing the trade mark owners from reflecting their trade marks in corresponding domain names. See WIPO Overview 3.0, section 3.1.2:

“UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.”

The Complainant also submits that the Respondent was using the disputed domain name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the website, as per paragraph 4(b)(iv) of the Policy.

As described above, the Respondent’s previous use of the disputed domain name as part of a phishing scheme to harvest, apparently for commercial gain, personal data from Facebook users as result of intentionally created confusion constitutes use in bad faith. See Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669, (<instagram-helpsupport.com>):

“the Panel considers the fact that the Domain Name resolved to a website with the same “look and feel” as the Complainant’s official Help Centre, containing an “Approved Account Participation Form” where Instagram users were asked to disclose their confidential account information, including their user name, account email and account password, apparently to harvest these personal data for commercial gain, is a clear indication that the Domain Name was being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, within the meaning of paragraph 4(b)(iv) of the Policy”.

The Complainant sent the Respondent a letter demanding that the Respondent stop using the disputed domain name and to transfer the disputed domain name to the Complainant. The Respondent has failed to respond to this demand letter. A failure to respond to such communications also supports a finding of bad faith. See Samsung Electronics Co., Ltd. v. EAO Digital Solutions, WIPO Case No. D2012-0693:

“The Respondent’s failure to reply to a particularly clear and explicit cease and desist letter explaining the Policy is further indicia of bad faith.”

The Panel finds that the failure by the Respondent to respond to the Complainant’s demand letter constitutes further evidence of bad faith.

Finally, the fact that the disputed domain name was suspended at the Complainant’s request does not cure the Respondent’s bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found that that the passive holding of a domain name may constitute evidence of bad faith, particularly where the trade mark in question is well-known.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <updatefb.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: February 21, 2021