WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. v. Domain Administrator, See PrivacyGuardian.org. / cou cou

Case No. D2020-3117

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org., United States / cou cou, China.

2. The Domain Name and Registrar

The disputed domain name <fbcdn.cash> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 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 December 1, 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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 22, 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 was founded in 2004 and today is one of the leading providers of online social networking services counting over 2.7 billion monthly active users and having its “www.facebook.com” website ranked as the 4th most visited website in the world.

The Complainant also operates the domain name <fbcdn.net>, used in connection with a “Content Distribution Network” to improve performance in providing content on the Internet (Annex 10 to the Complaint).

The Complainant is the owner, amongst others, of the trademark FB registered in the United States under No. 4659777, on December 23, 2014 (Annex 8 to the Complaint).

The disputed domain name <fbcdn.cash> was registered on January 19, 2020 and has been used in connection with advertisements placed at the Complainant’s platform redirecting users to seemingly benign content at webpages hosted at the disputed domain name (Annexes 14 and 15 to the Complaint). Presently the disputed domain name does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be the world’s leading provider of online social networking services, actively promoting and using the FACEBOOK and FB trademarks throughout the world.

The Complainant further asserts to use the “Facebook Content Distribution Network” (“FBCDN”) to optimize caching since popular content is stored on servers that have the greatest demand for such content, using for that purpose the domain name <fbcdn.net> and also having secured variants thereof such as <fbcdn.com> and <fbcdn.org> (Annex 11 to the Complaint).

According to the Complainant, the Respondent has been using the disputed domain name in connection with advertisements that redirect the Complainant’s users to webpages hosted at the disputed domain name displaying explicit images and advertisements that do not conform to the Complainant’s policies (such as for erectile dysfunction medication – Annexes 14 and 15 to the Complaint).

The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s notorious trademark, creating a likelihood of confusion, given that the addition of the “cdn” acronym refers to the Complainant’s Content Distribution Network and related domain name <fbcdn.net>, not being able to alter the fact that the Complainant’s trademark remains clearly recognizable in the disputed domain name.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:

(a) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services;

(b) the Respondent is not a licensee of the Complainant, nor has it been otherwise authorized by the Complainant to make any use of the FB trademark in a domain name or otherwise;

(c) the Respondent’s use of the disputed domain name to mimic the Complainant’s domain name <fbcdn.net>, used in connection with the Complainant’s Content Distribution Network, to link to webpages displaying explicit images and product advertisements that do not comply with the Complainant’s advertising policies;

(d) the Respondent is not commonly known by the disputed domain name; and

(e) the Respondent’s use of the disputed domain name in connection with explicit content and banned advertisement has the effect to tarnish the Complainant’s trademark.

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 given the use made of the disputed domain name in connection with advertisements placed at the Complainant’s platform.

The Complainant further contends that the Respondent’s use of the disputed domain name is clearly intended for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy, since it redirects Internet users to webpages that offer third-parties’ products for sale, also tarnishing the Complainant’s trademark in view of explicit content which has also been displayed at the disputed domain name.

B. Respondent

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

6. Discussion and Findings

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.

A. Identical or Confusingly Similar

The Complainant has established rights in the FACEBOOK and FB trademarks 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 FB trademark in its entirety. The addition of the acronym “cdn” 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). In that respect, the FB trademark is clearly recognizable in the disputed domain name.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

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 given the factual background and party contentions set out above, 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 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 name. 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 has used the disputed domain name in connection with advertisements that redirected the Complainant’s users to content capable of tarnishing the Complainant’s trademark; this 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 name. The second element of the Policy has also been met.

C. Registered and Used in Bad Faith

This case presents the following circumstances which indicate bad faith registration and use of the disputed domain name:

a) the Complainant’s trademark is registered and is well known;

b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

c) the Respondent’s use of the disputed domain name to redirect Internet users to webpages that offer third-parties’ products for sale, also tarnishing the Complainant’s trademark in view of explicit content has also been displayed at the disputed domain name; and

d) the Respondent gave a false physical address to which the Center’s communications could not be delivered.

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.

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 <fbcdn.cash> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: February 5, 2021