ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2007-1193
1. The Parties
The Complainant is Facebook Inc. of Palo Alto, California, the United States of America, represented by Heller Ehrman LLP, the United States of America.
The Respondent is Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Fabulous.com Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 15, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 16, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 15, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2007. In accordance with Paragraph 5(a) of the Rules, the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 18, 2007. 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 Paragraph 7 of the Rules.
4. Factual Background
The Complainant in this administrative proceeding is Facebook, Inc., a Delaware corporation having its principal place of business in Palo Alto, California, the United States of America. The Complainant was founded in 2004 and is a recognized leader in providing online social networking services and related products and services. Currently, the Complainant has more than 31 million active users of its online services, and its website at “www.facebook.com” is the sixth-most trafficked website in the United States of America. The Complainant is the owner of numerous FACEBOOK trademarks that are registered in many countries worldwide, inter alia, a word mark FACEBOOK (Reg. No. 3122052) filed on February 24, 2005 with the United States Patent and Trademark Office and stated to have been first used in commerce at least as early as February 4, 2004 (the “FACEBOOK Marks”), and a European Community Trademark for FACEBOOK (Reg. No. 2483857) with a registration date of June 13, 2003 (to which the Complainant states it is the successor-in-interest). The FACEBOOK Marks mostly designate the provision of online chat rooms for transmission of messages as well as an online directory information service, both concerning collegiate life, classifieds, virtual community and social networking.
The Respondent in this administrative proceeding is Privacy Ltd. Disclosed Agent for YOLAPT. The disputed domain name was first registered on October 3, 2004. At “www.face-book.com”, the Respondent provides, inter alia, advertising for and links to other commercial websites offering social networking and information services.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy is present in this case:
(i) The domain name is identical or confusingly similar to the Complainant’s FACEBOOK Marks.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered the mark FACEBOOK anywhere in the world, is not a licensee of the Complainant, does not produce or market any of its own goods or services under the FACEBOOK name or mark but simply uses the website at “www.face-book.com” as a portal site, listing advertisements and links to other commercial websites that offer goods and services highly similar to those of the Complainant. Furthermore, the Respondent does not use the domain name in connection with a bona fide offering of goods and services and is not commonly known by the domain name. Finally, the Respondent is not deemed to make any legitimate noncommercial or fair use of the domain name as it merely diverts customers to other commercial websites.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the website at the disputed domain name is used in order to free ride on the Complainant’s reputation and customer goodwill. The Respondent is intentionally diverting Internet users and customers to a website for commercial and financial gain. The Respondent had actual notice of the FACEBOOK Marks and the Complainant as the source of high quality products and services. Since the Respondent appears not to use FACEBOOK in association with any of its own products or services and does not identify its own company by such name, it would have no reason to register and use the disputed domain name unless it was aware of the goodwill associated with FACEBOOK and was attempting to usurp this goodwill. In addition, the Respondent had constructive notice of the Complainant’s prior use of the FACEBOOK Marks that had been used at least for eight months already when the Respondent registered the disputed domain name. The Respondent either knew or should have known of the Complainant’s prominent use of FACEBOOK. Finally, the Complainant contends that the Respondent’s bad faith is evidenced by the lack of any reply to the Complainant’s attempts to contact it by email and by ordinary mail.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name was registered on October 3, 2004, i.e. quite possibly before the Complainant acquired any trademark rights in the FACEBOOK Marks (it is unclear from the provided material when exactly the Complainant first acquired rights in the European Community Trademark for FACEBOOK, which as noted previously has a registration date of June 13, 2003). However, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. See AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The fact that the disputed domain name predates the Complainant’s trademark registration is only relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii) of the Policy, which is considered below.
The disputed domain name fully incorporates the FACEBOOK Marks and can only be distinguished from them by the hyphen between the words “face” and “book”. Hyphens are generally without legal significance when comparing domain names to trademarks. See X-Copper Legal Services Inc. v. Majid Hashemi, WIPO Case No. 2007-0251; VeriSign Inc. v. Bin g Glu / G Design, WIPO Case No. D2007-0421.
Finally, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
The domain name is therefore almost identical and in any case confusingly similar to a trademark in which the Complainant has rights, and the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent in this case did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under Paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of Paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 on-line 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 two parts of the third requirement of the Policy are generally regarded cumulative conditions: i.e. the Complainant must show that the domain name was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758.
As to bad faith registration, on balance, the Panel is convinced that the domain name was registered by the Respondent in bad faith for the following reasons, although the case established by the Complainant is towards the weaker end of the spectrum, noting in particular the absence of provided evidence from which the Panel may assess the extent (or otherwise) of the fame of the name or mark FACEBOOK at the moment of the registration of the disputed domain name:
Firstly, it is important that the name FACEBOOK (consisting of “face” and “book”) is made up of two common terms in an imaginative manner and can generally not be found in dictionaries. It must therefore be considered as inherently distinctive (this is confirmed by the numerous trademark registrations in English-speaking countries worldwide which do not rely on secondary meaning). The Respondent therefore did not register just any generic domain name.
Secondly, taking into account all circumstances of this case, it is difficult to imagine that – eight months after the Complainant’s services were first offered online – the registration of an almost identical domain name that is not generic by a third party is a mere coincidence. The Complainant’s services, by their very nature, became known to the public through the Internet and thus worldwide. Domicile is irrelevant in this regard.
Thirdly, the Respondent has never been offering any products or services of its own or been known under the domain name. It could have given a different meaning to the combination of the words “face” and “book” by using the disputed domain name but preferred to enter into direct competition with the Complainant.
Fourthly, the Respondent is using a privacy shield, and apparently wishes not to be identified. The Panel has considered the possibility that such behavior enables the Respondent to conceal facts that might otherwise be considered as evidence against it.
Finally, the Respondent has not made any effort to defend itself – neither when first contacted by the Complainant nor in the course of these administrative proceedings. The Panel is not of the opinion that the absence of a response in UDRP proceedings is to be considered automatically as an indication of bad faith. Still, cases involving generic domain names must be distinguished from cases concerning inherently distinctive domain names, in particular those where the domain name includes a famous trademark as in this case.
Having regard to these facts, the Panel is convinced on balance that the disputed domain name was registered by the Respondent with actual knowledge of the Complainant’s website at “www.facebook.com”. Actual knowledge of the FACEBOOK Marks is also required and more difficult to establish. Although the Panel does not exclude the possibility that the Respondent may have been aware, at the time of registering the disputed domain, of the European Community Trademark for FACEBOOK, the evidence is not decisive, and the point at which the Complainant itself acquired that mark remains unclear. As a general rule, a domain name is not registered in bad faith if it was registered before the trademark. Still, an exception must be made to this rule where the respondent registered the domain name with speculative intent in full knowledge of the likely use of the trademark by the complainant, and, more particularly, where the respondent hopes to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. See e.g., inter alia, ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669; Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. Considering the circumstances of the present case, the Panel is of the opinion that the Respondent in all likelihood had such speculative intent and thus that the registration of the disputed domain name occurred in bad faith. As a result, the Panel need not make a finding on whether the concept of constructive notice exists under the Policy (most panels have declined this unless in the presence of very special circumstances).
As to bad faith use, by fully incorporating the FACEBOOK Marks with only a minor variation into the disputed domain name and by using the website under such domain name to provide advertisements and links to other commercial websites that offer services and products in direct competition with the Complainant’s products and services, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under Paragraph 4(b)(iv) of the Policy. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references.
Therefore the Respondent has also been using the disputed domain name in bad faith.
As a result, the Complainant has established registration and use in bad faith under Paragraph 4(a)(iii) of the Policy as well.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dated: September 23, 2007
ADMINISTRATIVE PANEL DECISION