WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Bogdan Surdu and Arcanite Media Ltd.

Case No. DRO2019-0001

1. The Parties

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

The Respondent is Bogdan Surdu of Bucharest, Romania and Arcanite Media Ltd. of Belize City, Belize, self-represented.

2. The Domain Name and Registrar

The disputed domain name <facebook.ro> is registered with RoTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2019. On January 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on January 16, 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 January 22, 2019.

On January 16, 2019, the Center sent a communication in both Romanian and English to the Parties regarding the language of the proceeding. On the same day, the Complainant submitted a request for English to be the language of proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

On January 17, 2019, the Center received an email communication from the Respondent informing the Center it registered the disputed domain name on behalf of a third party. The Center received two email communications from said third party on January 24, 2019 and another one on February 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 January 25, 2019. On the same date, the Center received an additional filing from the Complainant. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on February 15, 2019 it will proceed to panel appointment.

The Center appointed Mihaela Maravela as the sole panelist in this matter on February 20, 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.

4. Language of proceedings

According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:

- the Complainant requested English to be the language of the administrative proceedings arguing, inter alia, that it does not understand Romanian, the disputed domain name consists of the English term “facebook” and it would be disproportionate to require the Complainant not to submit the Complaint in English as this would result in additional expense and unnecessary delay for the Complainant for translation;

- the Center sent all the communications in both languages, Romanian and English;

- the Respondent did not object to English being the language of the proceedings, and transmitted an email to the Center in English; also, the third party referred to above, Arcanite Media Ltd., transmitted three emails to the Center in English;

- the Registration agreement for “.ro” domain names is available both in Romanian and English and there is no provision for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement;

- the correspondence between the Registrar and the Respondent Bogdan Surdu when registering the disputed domain name on October 4, 2018 as well as the subsequent correspondence of the same day from the Respondent Bogdan Surdu to Arcanite Media Ltd. for delivery of the transfer key for the disputed domain name was carried in English;

- the Respondent Bogdan Surdu was involved in prior alternative dispute resolution (“ADR”) proceedings involving an “.eu” domain name carried in English; also, Arcanite Media Ltd. was involved in prior UDRP proceedings, one of which was carried also in English; and

- it should also be noted that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language. In the present case, although the Registration Agreement for the disputed domain name is in Romanian, the Complainant is not able to communicate in Romanian, while both the Respondent Bogdan Surdu and Arcanite Media Ltd. seem to understand English, as mentioned above.

5. Factual Background

The Complainant contends that it is the world’s leading provider of online social networking services. Founded in 2004, Facebook allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. Today, Facebook has more than 2.27 billion monthly active users and 1.5 billion daily active users on average worldwide. Its main website “www.facebook.com” is currently ranked as the third most visited website in the world and fourth in Romania.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word FACEBOOK in various jurisdictions throughout the world, including the following:

- the European Union Trade Mark for the word FACEBOOK with registration number 002483857, registered on June 13, 2003,

- the International Trademark for the word FACEBOOK with figurative element, having registration number 1075094, registered on July 16, 2010,

- the US Trademark for the word FACEBOOK with registration number 3041791 registered as of January 10, 2006.

The Complainant is the owner of numerous domain names consisting of the term FACEBOOK, for instance, <facebook.com>, <facebook.org>, <facebook.biz> as well as under country extensions such as <facebook.com.ro>, <facebook.hu>, <facebook.de>, <facebook.be>, <facebook.eu>, <facebook.fr>, etc.

The disputed domain name was registered on October 4, 2018 and is not resolving to an active website.

The Complainant tried to contact the Respondent to settle the dispute concerning the disputed domain name amicably but to no avail in the absence of contact details of the Respondent in the public WhoIs database (for reasons related to the application of the GDPR¹) and given the refusal by the Registrar to forward the Complainant’s cease and desist letter to the registrant.

6. Parties’ Contentions

A. Complainant

The Complainant contends that it has established rights in the term FACEBOOK, which significantly predate the registration of the disputed domain name, which is identical to its trademarks.

Further, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its FACEBOOK trademark, in a domain name or otherwise. The Respondent cannot assert that, prior to any notice of this dispute, the Respondent was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is not resolving at the time of the filing of the Complaint. The Respondent cannot conceivably claim that the Respondent is commonly known by the disputed domain name given the notoriety surrounding the FACEBOOK trademark and its exclusive association with the Complainant. Moreover, given the renown and explosive popularity of the Complainant’s FACEBOOK trademark, it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent or a third party that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

In addition, with regard to the third element, the Complainant argues that given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that the Respondent did not have knowledge of the Complainant’s FACEBOOK trademark at the time of the registration of the disputed domain name in 2018. The Complainant further contends that the Respondent has engaged in a pattern of conduct within the meaning of the Policy by registering two domain names incorporating the Complainant’s and a third party’s trademarks for the purpose of preventing trademark owners from reflecting their trademarks in corresponding domain names. Moreover, the Complainant argues that the Respondent’s passive holding of the disputed domain name constitutes strong evidence of bad faith notably taking into account the fame of the Complainant’s FACEBOOK trademark and the implausibility of any good faith use to which the disputed domain name may be put. Given the overwhelming renown and explosive popularity of the Complainant’s FACEBOOK trademark worldwide, and the nature of the disputed domain name, which exactly corresponds to the Complainant’s trademark, 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.

In an additional submission, the Complainant argued that given that the Rules provide that the Respondent is the holder of a domain name registration against which a Complaint is initiated, it amended the Complaint in light of the registrant information received from the Registrar. The Complainant added that given that the determination of the Respondent’s identity is the role of the Panel and that Arcanite Media Ltd. seemingly wishes to be involved in these proceedings, the outcome would not differ if Arcanite Media Ltd. was in fact the registrant of record, given that they hold (or held) a number of clearly trademark abusive domain names and have previously been the respondent in a number of successful complaints. The Complainant concluded that Arcanite Media Ltd. had no legitimate reason to acquire the disputed domain name and their registration and use would certainly have been in bad faith.

B. Respondent

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

7. Discussion and Findings

Notwithstanding the fact that no formal Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant, and the informal email communications from the Respondent Bogdan Surdu and Arcanite Media Ltd.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Preliminary issue: Respondent’s identity

As noted above, the Respondent Bogdan Surdu has been confirmed by the Registrar as the listed registrant of record for the disputed domain name.

Upon receipt of the Complaint, the Respondent Bogdan Surdu replied that he registered the disputed domain name on behalf of Arcanite Media Ltd. and provided contact details as well as proof of the delivery on October 4, 2018 by the Respondent Bogdan Surdu of the transfer authorisation key for the use of the disputed domain name to Arcanite Media Ltd. The Respondent Bogdan Surdu also asked that the record is updated to reflect Arcanite Media Ltd. as respondent for this case, copying them to the correspondence.

After the Complainant filed an amended Complaint further to being provided with the details of the registrant (as the details were not publicly available due to the GDPR), Arcanite Media Ltd. sent two emails to the Center asking why does the Complainant “direct the complaint to Bogdan when they were clearly instructed to direct it to Arcanite Media” and asking the Center for the amended Complaint and information on the due date for response. The Center sent the notification of the Complaint to both the Respondent Bogdan Surdu and Arcanite Media Ltd. After the expiry of the due date for response, Arcanite Media Ltd. has sent an email to the Center asking for a list with information needed from them “to freeze a potential transfer”.

According to the Rules, the respondent is the holder of a domain-name registration against which a complaint is initiated. In this case, the recorded holder of the disputed domain name, Bogdan Surdu, informed the Center that he registered the disputed domain name on behalf of Arcanite Media Ltd. and submitted evidence that he delivered the transfer authorisation key for the use of the disputed domain name to the mentioned company. Arcanite Media Ltd. asked for the Complaint to be delivered to it and thus confirmed the information and proof submitted by the Respondent Bogdan Surdu. Given the evidence on the record, the Panel considers that Arcanite Media Ltd. is the beneficial holder of the disputed domain name.

In order to ensure implementation of its decision, the Panel will treat both Bogdan Surdu (the registrant on record for the disputed domain name) and Arcanite Media Ltd. (the beneficial holder of the disputed domain name) as respondents (hereinafter both referred to as “the Respondent”).

The Panel is satisfied that the Center, by sending communications to both Bogdan Surdu and to Arcanite Media Ltd., has exercised extreme care and discharged its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.

B. Amended Complaint and Additional Filing

The Complainant was informed by the Center by the letter of January 16, 2019 on the registrar-identified registrant and contact details. The Complainant was informed that it can choose to amend the Complaint to add the newly identified registrant as a respondent. The Complainant was also informed of the possibility to include further facts or arguments in light of the new registrant information. After the Center provided this information to the Complainant, the identified registrant delivered an email to the Center arguing that the disputed domain name was registered on behalf of Arcanite Media Ltd. The Center replied to this email informing the registrant of the disputed domain name that the Center will forward such communication to the Panel (when appointed). In view of the correspondence from the identified registrant and of the reply by the Center to such correspondence, the Complainant requested an extension to the deadline to amend the Complaint. The Complainant filed an amended Complaint on January 22, 2019 adding the newly identified registrant as the Respondent. On January 25, 2019, the Complainant filed an additional filing, adding new legal arguments with respect to Arcanite Media Ltd., referring to previous UDRP decisions concerning Arcanite Media Ltd. and domain names that it has registered.

The information on registered domain names registered by Arcanite Media Ltd. or previous UDRP cases in which Arcanite Media Ltd. (referred to as the beneficial holder of the disputed domain name in correspondence from the registrant of record) might have been involved in the past was available when the Complainant submitted the amended Complaint; the Complainant failed to show the circumstances that prevented it to include such arguments in the amended Complaint. Under these circumstances, given also that the information presented by the Complainant is publicly available and considering the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, according to which a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision, the Panel will not allow the additional filings by the Complainant.

C. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the FACEBOOK trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant has rights.

Numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.

Here the disputed domain name incorporates in its entirety the Complainant’s FACEBOOK trademarks.

It is well accepted by UDRP panels that a country code Top-Level Domain (“ccTLD”), such as “.ro”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

D. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no 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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant has established a prima facie case that it holds rights over the trademark FACEBOOK and claims that the Respondent had no legitimate reason to acquire the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970. Moreover, the Panel notes that previous UDRP panels have found that domain names identical to a complainant’s trademark (as it is the case here) carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark FACEBOOK in the disputed domain name.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

E. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Having in view the evidence put forward by the Complainant on the extensive use and reputation obtained since the launch of the FACEBOOK platform, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark FACEBOOK. See for findings on the well-known character of the FACEBOOKtrademark e.g. Facebook Inc. v. Narinderpaul Brar / Registration Private, Domains By Proxy, LLC, WIPO Case No. DSO2018-0001, Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950, Facebook Inc. v. Stuart West, West & Associates, A PC, WIPO Case No. D2015-1766.

The fact that the disputed domain name is identical to the Complainant’s trademarks and that the said trademarks are extensively used indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. As held in a similar case, “[t]he disputed domain name differs from the Complainant’s trademark only in the selection of the Top-Level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion” (Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186).

The Respondent has failed to make to date any genuine use of the disputed domain name. Passive holding amounts to bad faith use under the circumstances of the present case (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210: “passive holding, coupled with knowledge of trademark rights of a complainant in the name being so held, can amount to bad faith use. Under the present facts, this Panel sees no reason to depart from that view”). “The lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”. See LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.

The Respondent Arcanite Media Ltd. has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent Arcanite Media Ltd. has registered 45 domain names, many of which include well-known trademarks, such as <karenmillen.dk>, <marriott.dk>, <burberry.fi>. Such pattern of cybersquatting is strong evidence of bad faith. For a similar finding see Facebook Inc. v. Narinderpaul Brar / Registration Private, Domains By Proxy, LLC, supra, El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469.

In addition, paragraph 4(b)(ii) of the Policy, stating that “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 you have engaged in a pattern of such conduct” is relevant in this case. According to the public information available to the Panel, the Respondent Arcanite Media Ltd. was involved in at least two other UDRP proceedings where the panels decided in favor of the complainants. Given the factual situation in this case, as described above, the Panel considers that the circumstance listed under paragraph 4(b)(ii) of the Policy is also applicable in this proceeding.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

8. 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 <facebook.ro> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: March 6, 2019

¹ According to the General Data Protection Regulation 2016/679 (GDPR), data related to natural persons cannot be published, as referenced in the WhoIs details for the disputed domain name.