Facebook, Inc. v. isaias grullon sanchez
Claim Number: FA1909001863830
Complainant is Facebook, Inc. (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is isaias grullon sanchez (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2019; the Forum received payment on September 25, 2019.
On September 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@facebookbitcoinonline.us, postmaster@facebookcryptocurrencyexchange.us, postmaster@facebookcryptomoney.us. Also on September 26, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s leading provider of online social networking services. Complainant has rights in the trademark FACEBOOK through its use in commerce since 2004 and its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) dating back to 2006. Respondent’s <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names, all created on December 14, 2007, are identical or confusingly similar to Complainant’s FACEBOOK mark as each incorporates the mark in its entirety, merely adding the generic terms “bitcoin,” “online,” “cryptocurrency,” “exchange,” and/or “money,” and the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names. Respondent is not licensed or otherwise authorized to use Complainant’s FACEBOOK mark and is not commonly known by any of the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect users to inactive websites.
Respondent registered and uses the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names in bad faith. Respondent has demonstrated a pattern of bad faith by registering multiple domain names incorporating Complainant’s FACEBOOK mark, some of which are the subject of a prior UDRP complaint filed against Respondent. Respondent also fails to actively use any of the disputed domain names and has been passively holding them. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the FACEBOOK mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) each of the domain names was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the FACEBOOK mark based, inter alia, upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the FACEBOOK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names are confusingly similar to the FACEBOOK mark, as the names each incorporate the mark in its entirety, adding the generic terms “bitcoin,” “online,” “cryptocurrency,” “exchange,” and/or “money,” and the “.us” ccTLD. The addition of generic or descriptive words to a trademark are typically not sufficient to distinguish a domain name from the incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also TTT Moneycorp Limited v. Mebrat Biniam, FA 1737316 (Forum July 22, 2017) (“The Panel finds that the disputed domain name, <moneycorp.us>, is confusingly similar to Complainant’s valid and subsisting trademark, MONEYCORP. Complainant has adequately pled its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the g TLD “.us” to the trademark. This is inadequate to distinguish the disputed domain name from Complainant’s trademark.”). The Panel therefore determines that the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names are each confusingly similar to the FACEBOOK mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the FACEBOOK mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of all three of the at-issue domain names as “isaias grullon sanchez,” and no information on the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. In the absence of a Response or any other submission in this case by Respondent, the Panel finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, or <facebookcryptomoney.us> domain names.
Complainant also asserts that Respondent’s inactive holding of the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names indicates that it does not have rights or legitimate interests in the name. Prior decisions have held that inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant has submitted screenshots showing that Respondent’s disputed domain names resolve to webpages that display the message “Coming Soon” and no other substantive content. In the absence of any submission from Respondent to explain its use of these domain names, the Panel finds that Respondent has made no use of them and thus has no rights or legitimate interests in the domain names per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that, in light of the widespread fame and notoriety of Complainant's FACEBOOK mark, it is inconceivable that Respondent could have registered the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names without actual or constructive knowledge of Complainant's rights in the mark. The Panel notes that arguments of bad faith based on constructive notice are typically not accepted however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge except under specific circumstances where both parties are subject to the laws of a jurisdiction in which the theory of constructive notice is applied. See UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, the Panel agrees with Complainant that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Complainant further asserts that Respondent’s combination of the FACEBOOK mark with words such as “bitcoin,” “online,” “cryptocurrency,” “money,” and “exchange,” in order to create confusion or false connection with the mark, indicates that it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark.
Next, Complainant contends that Respondent’s registration of the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names is part of a pattern of bad faith registration to prevent Complainant from reflecting its FACEBOOK mark in a corresponding domain name. A pattern of bad faith registration can be established by a showing of respondent’s registration of other domain names infringing on the Complainant’s mark or the marks of third parties, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Jeff Fadness, FA 95247 (Forum Sep. 7, 2000) (“The registration of multiple domain names that infringe on the Complainant’s trademarks is evidence of a pattern of conduct. One instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4.b.(ii).”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding “a pattern of conduct of the type specified in paragraph 4(b)(ii) of the Uniform Policy” where “Respondent has registered domain names containing the trademarks or service marks of other widely known Australian businesses”). Complainant submits into evidence copies of WHOIS records for other domain names that Respondent has registered, all of which incorporate Complainant’s FACEBOOK mark or well-known third-party marks. The Panel therefore determines that the registration and use of the three disputed domain names is part of a pattern of conduct designed to prevent Complainant from reflecting its mark in corresponding domain names and is evidence of Respondent’s bad faith registration and use per Policy ¶ 4(b)(ii).
Finally, Complainant asserts that Respondent’s failure to use the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names since their initial registration is evidence of its bad faith. The Panel notes that Complainant is not required to make any Policy ¶ 4(b) assertions, as the examples in that sub-paragraph are merely illustrative rather than exclusive to show bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Further, under the theory known as passive holding, inactive ownership of a domain name can serve as evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”) Complainant has submitted into evidence screenshots of the website to which each of the disputed domain names resolves. These display the message “Coming soon” but show no other substantive content. In the absence of any Response or other submission by the Respondent that could shed some light on its intentions, the Panel therefore determines that Respondent does inactively hold the disputed domain names and finds, by a preponderance of the evidence before it, that Respondent has registered and used the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookbitcoinonline.us>, <facebookcryptocurrencyexchange.us>, and <facebookcryptomoney.us> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 18, 2019
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