The Complainant is Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Global Domain Privacy Services Inc., Panama / Evgeniy Gavonov, Ukraine.
The disputed domain name <facebooklibra.me> is registered with URL Solutions, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2019, 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 October 11, 2019, 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 October 15, 2019.
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 October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2019.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 18, 2019. 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 is Facebook Inc., an internationally recognized provider of social networking services and related products. The Complainant advertises and sells its services through websites under its <facebook.com>, <facebook.org>, <facebook.biz> and <facebook.us> domain names, as well as numerous other similar domain names.
The Complainant owns the FACEBOOK trademark in many jurisdictions throughout the world (e.g. United States registration No. 3041791, registered on January 10, 2006, and European Union trademark registration No. 004535381, registered on June 22, 2011).
The disputed domain name was first registered on June 23, 2019. According to the information provided by the Registrar, the disputed domain name is currently held by Evgeniy Gavonov, the Respondent. The disputed domain name has stopped resolving to an active website.
The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.
The Respondent did not reply to the Complainant’s contentions.
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a)(b) and (c) of the Policy, the Panel concludes as follows:
The Complainant has submitted sufficient evidence to demonstrate its registered right in the trademark FACEBOOK.
The FACEBOOK trademark is reproduced in the disputed domain name <facebooklibra.me>. The disputed domain name differs from the trademark only by the addition of the term “libra”.
It is the consensus view of the UDPR panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.
The Respondent used the disputed domain name to host a website that contained links for purchasing “libra”, a digital currency, which is not yet available on the market and was announced to be launched by the Complainant.
UDPR panels have largely held that the composition of a trademark plus additional term cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (WIPO Overview 3.0, section 2.5.1). The disputed domain name was registered shortly after the Complainant had announced the launch of its digital currency named “libra”, and the Respondent previously operated a website under the disputed domain name that used the logo of the Complainant’s “libra” currency and copied materials published at the Complainant’s official website for the “libra” currency under the domain name <libra.org>. Therefore, it is more likely than not that the Respondent is not making any bona fide use of the disputed domain name.
Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
Under the circumstances of this case and considering the notoriety of the Complainant’s trademark (Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004), it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.
A registration of a domain name shortly after significant media attention, e.g. in connection with a product launch, supports the finding that the Respondent has registered and used the disputed domain name in bad faith (WIPO Overview 3.0, section 3.8.2). The disputed domain name was registered on June 23, 2019, only days after the Complainant had announced its launch of the “libra” currency.
Furthermore, the website previously hosted under the disputed domain name used the Complainant’s logo and other materials published at the Complainant’s official website for the “libra” currency. This indicates that the Respondent is engaged in an intentional attempt to pass himself off as the Complainant and to attract Internet users to his website for his own commercial benefit (Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466). Furthermore, the term “libra” reinforces the association and increases the confusion with the Complainant, given that the Complainant, shortly before the disputed domain name was registered, had announced the launch of an online currency called “libra”. In this respect, the disputed domain name carries a risk of implied affiliation.
The Respondent therefore uses the disputed domain name in bad faith.
The fact that the disputed domain name is currently pointing to an inactive webpage does not present a finding of bad faith in the present case.
Accordingly, the Complainant has also fulfilled 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 name <facebooklibra.me> be transferred to the Complainant.
Date: November 27, 2019
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