If you hold onto a domain infringing on a famous trademark such as Facebook, you’re wasting your renewal fees.
The registrant of FacebookTemplate.com, a domain registered way back in 2006 renewed it 13 times since then. Clearly, a waste of money, as Facebook Inc. filed a UDRP at the WIPO.
Considering that on September 26, 2006, Facebook opened to everyone at least 13 years old with a valid email address, the registrant of FacebookTemplate.com (December 28, 2006) must have been an early adopter.
The sole panelist probably took one and a half seconds to decide on this, ordering the domain to be transferred to the Complainant.
Facebook, Inc. v. R Lee
Case No. D2020-18581. The Parties
Complainant is Facebook, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is R Lee, United States.
2. The Domain Name and Registrar
The disputed domain name <facebooktemplate.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2020.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on September 4, 2020. 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
Complainant Facebook, Inc. was founded in 2004, and is the world’s leading provider of online social-networking services. As of March 31, 2020, Complainant had approximately 2.6 billion monthly active users and 1.73 billion daily active users on average worldwide. Its services are provided in more than 70 languages.
Complainant owns a number of national, regional, and international registrations for the FACEBOOK trademark, including United States Trademark Registration Nos. 3,041,791 and 3,122,052 (registered on January 10, 2006 and July 25, 2006 respectively), European Union Trade Mark Registration No. 009151192 (registered on December 17, 2010), and International Trademark Registration No. 1075094 (registered on July 16, 2010). In 2019, the FACEBOOK brand ranked 14th in Interbrand’s Best Global Brands report.
Complainant also owns numerous domain names consisting of or including its FACEBOOK and FB trademarks.
The disputed domain name, <facebooktemplate.com>, resolves to an inactive (passive) website. The disputed domain name was first registered on December 28, 2006.
On May 11, 2020, Complainant sent a cease-and-desist letter to the privacy service in whose name the disputed domain name was then registered. On May 28, 2020, Complainant forwarded a cease-and-desist letter to Respondent. Respondent do not reply to the letter or to any subsequent reminders.
5. Parties’ Contentions
A. Complainant
Complainant submits that the disputed domain name is confusingly similar to its FACEBOOK trademark. It points out that the disputed domain name incorporates in full the FACEBOOK mark as its leading element, together with the descriptive term “template”.
Complainant notes that it is the owner of a number of registrations for the FACEBOOK trademark and, thus, that it has rights in the mark.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant emphasizes that, to the best of its knowledge, the disputed domain name has not been used with any active website or for any other purposes since its initial registration in December 2006. Thus, Complainant asserts, Respondent may not be found to be using the disputed domain name in connection with a bona fide offering of goods or services and there is no evidence that Respondent has made any demonstrable preparations to use the disputed domain name.
Complainant maintains that Respondent is not a licensee of Complainant and that there is no evidence that Respondent, R Lee, is commonly known by the disputed domain name.
Finally, given that the disputed domain name resolves to an inactive website, Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
In short, Complainant declares, “Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy […]”.
To support its contention that the disputed domain name was registered and is being used in bad faith, Complainant maintains that: (1) the FACEBOOK trademark is highly distinctive and famous throughout the world; (2) according to the historic WhoIs records, Respondent acquired the disputed domain name in January 2019; (3) Respondent cannot credibly argue that it did not have prior knowledge of Complainant’s trademark at the time he registered the disputed domain name in 2019; (4) there is an apparent connection between Respondent and a previous registrant who has engaged in an abusive pattern of domain name registration targeting Complainant’s FACEBOOK trademark; (5) the disputed domain name resolves to an inactive website; (6) Respondent made use of a privacy service in order to conceal his identity; and (7) the disputed domain name “carries with it a high risk of implied affiliation with [] Complainant”.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Finding
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name, <facebooktemplate.com>, is confusingly similar to the FACEBOOK trademark. As noted by Complainant, the disputed domain name incorporates in full the FACEBOOK mark, adding only the non-distinctive term “template” and the generic Top-Level Domain “.com”.
Prior UDRP panels have found similar domain names, consisting of Complainant’s FACEBOOK trademark, together with additional descriptive terms, to be confusingly similar to Complainant’s trademark. See, e.g., Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Nikki Baumann, WIPO Case No. D2020-1103(<facebookaffiliates.com>); Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Michael Steiner, Engrain, WIPO Case No. D2019-2900 (<facebookmarketplace.com>); and Facebook Inc. v. The Lord Above, WIPO Case No. D2019-2038 (<facebookcourt.com>).
The Panel further determines that Complainant has rights in the FACEBOOK trademark, as evidenced by its national, regional, and international registrations for the mark, as well as its long and substantial use.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent has not come forth with any evidence to rebut the case against him. The evidence supports a determination that the disputed domain name resolves to an inactive or passive website. Absent any evidence of use of the disputed domain name, it may not be held that Respondent is making a bona fide use of the disputed domain name or a legitimate noncommercial or fair use of the disputed domain name. There also is no evidence that Respondent is commonly known by the disputed domain name.
C. Registered and Used in Bad Faith
The Panel determines that the disputed domain name was registered and is being used in bad faith. Complainant submits that Respondent acquired the disputed domain name in January 2019 according to the historic WhoIs records. The Panel notes that Complainant acquired the trademark registration for FACEBOOK since at least January 2006, which predates the registration of the disputed domain name. Therefore, it is not necessary in this case to determine when Respondent registered/acquired the disputed domain name. Given Complainant’s renown throughout the world, as well as that of its FACEBOOK mark, the Panel may assume that Respondent has prior knowledge of Complainant and of its FACEBOOK trademark at the time he registered the disputed domain name. See, Facebook Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547: “The Panel concludes that due to the worldwide reputation of the FACEBOOK trademark and its associated services, the Respondent must have been aware of the Complainant’s trademark when it registered and used the disputed domain names.”
The evidence further establishes that the disputed domain name does not resolve to an active website and that such passive use may support a determination of bad faith use. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Each of the above factors supports a finding of bad faith use in this case. The evidence supports a determination that Complainant’s FACEBOOK mark is distinctive and well known; that Respondent failed to respond to Complainant’s cease-and-desist letter and did not file a response in this case; that Respondent used a privacy service in an effort to conceal its identity; and that, in light of the widespread use of the FACEBOOK mark, it would stress credulity to believe that Respondent could make any good faith use of the FACEBOOK mark. Further, in view of distinctiveness of the FACEBOOK trademark and the confusingly similar nature of the disputed domain name, the disputed domain name carries a risk of implied affiliation with Complainant.
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 <facebooktemplate.com> be transferred to Complainant.
Jeffrey M. Samuels
Sole Panelist
Date: September 8, 2020
