Facebook, Inc. v Tstacy Muniru
Claim Number: FA1710001755333
Complainant is Facebook, Inc. (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Tstacy Muniru (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <facebook-mail.us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant attempted to participate in the mandatory CentralNic Mediation but the mediation process failed, as Respondent did not respond.
Complainant submitted a Complaint to the Forum electronically on October 24, 2017; the Forum received payment on October 24, 2017.
On October 24, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <facebook-mail.us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On October 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2017 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@facebook-mail.us.com. Also on October 25, 2017, 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 November 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 to the CDRP Dispute Resolution Policy (the "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 ICANN Policy, ICANN 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant registered the FACEBOOK mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,041,791, registered Jan. 10, 2006). See Compl. Annex 2. Respondent’s <facebook-mail.us.com> domain name is confusingly similar to Complainant’s mark as it incorporates the FACEBOOK trademark in its entirety, adds the descriptive term “mail” separated by a hyphen, and the “.us.com” top-level-domain (“TLD”).
Respondent has no rights or legitimate interests in the <facebook-mail.us.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses the <facebook-mail.us.com> domain name in bad faith. Respondent exhibits a pattern of bad faith registration utilizing Complainant’s trademark. See Compl. Annex 12, 13. Respondent had actual knowledge of Complainant’s rights in the FACEBOOK mark prior to registration of the disputed domain name. Respondent provided false WHOIS information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a worldwide renowned provider of online social networking services.
2. Complainant has established its trademark rights to the FACEBOOK mark by registering the same with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,041,791, registered Jan. 10, 2006).
3. Respondent registered the <facebook-mail.us.com> domain name on March 6, 2017.
4. Respondent has failed to make an active use of the disputed domain name and has shown a pattern of bad faith behaviour by registering multiple domain names incorporating the FACEBOOK mark.
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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon prior UDRP decisions 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the FACEBOOK mark based upon registration with the USPTO (e.g. Reg. No. 3,041,791, registered Jan. 10, 2006). See Compl. Annex 2. Registration with a trademark authority such as the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FACEBOOK mark. Complainant contends Respondent’s <facebook-mail.us.com> domain name is confusingly similar to Complainant’s mark as it incorporates the FACEBOOK trademark in its entirety, adds the descriptive term “mail” separated by a hyphen, and the “.us.com” TLD. Similar changes to a mark have proven insufficient to withstand a test for confusing similarity pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds Respondent’s domain name to be confusingly similar to Complainant’s FACEBOOK mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FACEBOOK mark and to use it in its domain name, adding only the descriptive word “ mail” which encourages internet users to assume that the domain name relates to the use of mail connected with Facebook;
(b) Respondent registered the <facebook-mail.us.com> domain name on March 6, 2017;
(c) Respondent has failed to make an active use of the disputed domain name;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <facebook-mail.us.com> domain name as Respondent is not commonly known by the domain name. Where a response is lacking, relevant information on this issue includes the WHOIS and any other evidence regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “tstacy muniru” as the registrant. See Compl. Annex 1. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the FACEBOOK mark. Panels may use these submissions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <facebook-mail.us.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent lacks rights and legitimate interests in the <facebook-mail.us.com> domain name as Respondent fails to use it in connection with a bona fide offer of goods and services, or a legitimate noncommercial or otherwise fair use. Instead, Complainant submits, Respondent inactively holds the disputed domain name. See Compl. Annex 10. Inactive holding of a disputed domain name can substantiate a finding that a respondent lacks rights and legitimate interests in a disputed domain name per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant contends Respondent has inactively held the domain name since registering it. The Panel agrees with Complainant and finds Respondent lacks rights and legitimate interests in the <facebook-mail.us.com> domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent exhibits a pattern of bad faith registration utilizing Complainant’s trademark. See Compl. Annex 12, 13. Registration of numerous domain names is a factor in determining registration and use in bad faith pursuant to Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith). Complainant submits and has proved Respondent registered multiple fraudulent domain names and websites that appropriate Complainant’s FACEBOOK mark as well as other brands such as Ebay and Craig’s List. See Compl. Annex 12, 13. The Panel agrees with Complainant that Respondent by that means exhibits a pattern of bad faith registration in registering multiple domain name, showing bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant argues Respondent had actual knowledge of the FACEBOOK mark prior to registration of the <facebook-mail.us.com> domain name. While constructive notice is insufficient for a finding of bad faith, actual knowledge is sufficient for a finding of bad faith and can be determined through an analysis of the domain name and the use made of it per 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 contends that Respondent’s appropriation of the entire FACEBOOK mark into the domain name, and failure to make an active use of the resolving websites evinces a finding of bad faith per Policy ¶ 4(a)(iii). The Panel then finds Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
Thirdly, Complainant contends Respondent submitted false WHOIS information when registering the disputed domain name. The presence of false WHOIS information can lead to a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Here, Complainant contends Respondent provided a false address as there is not a "123 Ewmwm Suth” address in New York and the phone number provided also appears to be false. See Compl. Annex 1. As such, the Panel finds Respondent bad faith registration per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FACEBOOK mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebook-mail.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 18, 2017
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