Famous brands own famous marks, and in the case of Facebook any domain that contains “facebook” is an invitation for a UDRP filing.
Just as Mike Mann found out recently, Facebook took matters to the WIPO against the domain FacebookWallet.com.
The Chinese registrant did not respond in this UDRP, and the matter closed quickly. At a separate UDRP, Facebook Inc. took ownership of the .net as well. Passing off as the financial branch of Facebook called Novi, adds to the severity of the case. The domain was being offered for sale.
Full details on this decision follow:
Facebook Inc. v. Ma Xiao Ke (马小科)
Case No. D2020-13461. The Parties
The Complainant is Facebook Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Ma Xiao Ke (马小科), China.
2. The Domain Name and Registrar
The disputed domain name <facebookwallet.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 29, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 7, 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
The Complainant is a provider of online social networking services. Its main website at “www.facebook.com” was launched in 2004 and now has over 2.5 billion monthly active users. The Complainant owns multiple trademark registrations in multiple jurisdictions, including Chinese trademark registration number 5251162 for FACEBOOK, registered on September 21, 2009 and specifying services in class 38. That trademark registration remains current. The Complainant has also registered multiple domain names incorporating the operative element “facebook”.
The Respondent is an individual resident in China. According to evidence provided by the Complainant, the Respondent’s email contact address in the Registrar’s WhoIs database was associated with other domain name registrations, including <amazonfin.com>, <amazonfinance.cn>, <applawatch.com>, and <xboxgame.cn>.
The disputed domain name was registered on April 18, 2017. It formerly resolved to a webpage mostly in Chinese that displayed the following message in Chinese and English: “the domain is for sale!” It also displayed the seller’s contact information. At the time of this decision, the disputed domain name no longer resolves to an active webpage; rather, it is passively held.
5. Parties’ Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks. The Respondent’s general offer to sell the disputed domain name targets the Complainant’s distinctive and well-known FACEBOOK trademark and constitutes a classic case of opportunistic cybersquatting and can by no means qualify as prior use in connection with a bona fide offering of goods or services.
The disputed domain name has been registered and is being used in bad faith. The Complainant’s FACEBOOK trademark is highly distinctive and famous throughout the world and has been used extensively since 2004. Therefore, the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. The Respondent is currently using the disputed domain name to point to a webpage offering it for sale. Such use of the disputed domain name to capitalize on the Complainant’s reputation and goodwill clearly constitutes bad faith use under the Policy. There simply cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent or a third party other than the Complainant as it would invariably result in misleading diversion and unfair taking advantage of the Complainant’s rights.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name includes the English term “wallet” and points to a website partially in English, which suggests that the Respondent understands English, and translation of the Complaint into Chinese would result in additional expense and unnecessary delay.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The Respondent has not commented on the language of the proceeding, filed a Response or otherwise expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting the Complaint as filed and rendering this decision in English will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2. Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the FACEBOOK mark.
The disputed domain name wholly incorporates the FACEBOOK mark as its initial and only distinctive element. The disputed domain name also includes the word “wallet”. However, as a mere dictionary word, that element is not capable of dispelling confusing similarity between a domain name and a trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. The FACEBOOK mark is clearly recognizable in the disputed domain name.
The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix may be disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] 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, even if [the respondent 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.
As regards the first circumstance set out above, the disputed domain name formerly resolved to a webpage that merely offered it for sale. It is now passively held. Neither use is a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Registrar confirms that the Respondent’s name is “Ma Xiao Ke (马小科)”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain name resolved to a webpage offering the disputed domain name for sale, and is now inactive. Neither use is a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but those circumstances are not exhaustive.
With respect to registration, the disputed domain name was registered in 2017, many years after the Complainant obtained its trademark registrations, including in China, where the Respondent is located. The Complainant has made extensive use of its trademark in connection with its social network since long before the registration of the disputed domain name. Even though the Complainant’s website is not freely accessible in mainland China, evidence supplied by the Complainant shows that it has received much publicity there and the top search results in the Baidu search engine for “facebook” relate to the Complainant. The disputed domain name wholly incorporates the trademark FACEBOOK, which has no apparent meaning other than as the Complainant’s mark. This all gives the Panel reason to find that the Respondent knew of the Complainant’s trademark and registered it in the disputed domain name in bad faith.
With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Panel notes the renown of the FACEBOOK mark. The disputed domain name wholly incorporates the FACEBOOK mark with no additional elements besides a dictionary word and a gTLD suffix. The Respondent registered other domain names that also combined a third party mark with a dictionary word. It appears that the Respondent has only ever actively used the disputed domain name to offer it for sale. The Respondent has changed his use of the disputed domain name since the initiation of this dispute. The Respondent has offered no explanation of any potential good faith use of the disputed domain name. In view of all these circumstances, the Panel considers it more likely than not that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <facebookwallet.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 21, 2020
