Facebook, Inc. v. macausite
Claim Number: FA1203001435040
Complainant is Facebook, Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is macausite (“Respondent”), Macau.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <facebookdeveloper.com>, registered with GoDaddy.com. LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2012; the National Arbitration Forum received payment on March 19, 2012.
On March 19, 2012, GoDaddy.com. LLC confirmed by e-mail to the National Arbitration Forum that the <facebookdeveloper.com> domain name is registered with GoDaddy.com. LLC and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2012 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@facebookdeveloper.com. Also on March 19, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name 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 National Arbitration 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 contends as follows:
Facebook is the world’s leading provider of online networking services. Complainant’s website at facebook.com is among the top 2 most-trafficked websites of any kind in the world, according to web information company Alexa. The FACEBOOK site, which operates under and features the FACEBOOK trade name and trademark as well as the facebook.com domain name, allows computer users to communicate with existing friends, make new friends, organize groups and events, and share their personal profiles, status, activities, photos, links, and videos, among many other activities.
The at-issue domain name registration record was created on August 15, 2006, well after Facebook began using and established protectable rights in the FACEBOOK Mark. Prior to September 16, 2011, however, the domain name was registered to an entity based in the Netherlands. Complainant accordingly submits that the domain name was registered by Respondent sometime after September 16, 2011.
The at-issue domain name resolves to a commercial webpage featuring advertisements but no other substantive content. Respondent presumably generates revenue when users select the advertising links on its website, and thus is using the at-issue domain name for commercial gain.
Facebook used the FACEBOOK Mark and acquired rights therein well prior to September 16, 2011, the earliest date upon which the Domain Name could have been registered to Respondent. (Facebook also owned rights in the FACEBOOK Mark prior to the original creation date of the Domain Name in August 2006.) Indeed, Facebook owns U.S. and foreign registrations contained in Exhibit 8 that issued well prior to those dates.
Respondent’s domain name incorporates the famous FACEBOOK Mark in its entirety, and is confusingly similar to the FACEBOOK Mark. The at-issue domain name merely adds the descriptive and non-distinctive term “developer” after the FACEBOOK Mark. The fame of the distinctive FACEBOOK mark and the non-distinctiveness of the added “developer” term will cause users encountering the Domain Name to mistakenly believe it originates from, is associated with, or is sponsored by Facebook.
Respondent is not commonly known as the Domain Name or any name containing Complainant’s FACEBOOK Mark. The WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the Mark as Respondent’s name or nickname. A registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name.
Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the at-issue domain name.
The at-issue domain name currently resolves to a page that lacks any substantive content and has been monetized with click-through ads. Such use further establishes that Respondent has no legitimate rights or interests in the domain name.
Respondent registered and is using the domain name in bad faith. The fame and unique qualities of the FACEBOOK Mark, which was adopted and registered by Complainant years prior to Respondent’s registration of the Domain Name, make it extremely unlikely that Respondent created the at-issue domain name independently.
Moreover, even constructive knowledge of a famous mark like FACEBOOK is sufficient to establish registration in bad faith.
Respondent’s use of the domain name to generate revenue using pay-per-click advertising also constitutes bad faith use and registration.
Such use demonstrates Respondent’s intent to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant’s FACEBOOK Mark.
Where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, rights in the mark FACEBOOK at all times relevant to this proceeding. Complainant’s mark is extremely well-known. The at-issue domain name was registered subsequent to Complainant acquiring rights in its FACEBOOK trademark. There is no apparent reason for registering the domain name except to capitalize on Complainant’s mark and its associated goodwill.
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.
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(e), 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 (Nat. Arb. 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 Complainant has rights in a mark that is confusingly similar to Respondent’s at-issue domain name.
Complainant owns rights in the FACEBOOK mark through its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,826,546 registered July 27, 2010) and with the Macao Special Administrative Region (“MSAR”) (e.g., Reg. No. N/47303 registered June 10, 2010). The Panel thereby concludes that Complainant has established rights in the FACEBOOK mark pursuant to Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Respondent’s domain name is confusingly similar to Complainant’s FACEBOOK mark. The disputed domain name consists of the FACEBOOK mark in its entirety with the addition of the descriptive/general term “developer” and the generic top-level domain (“gTLD”) “.com.” These alterations are insufficient to differentiate the disputed domain name from Complainant’s trademark. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s FACEBOOK mark pursuant to Policy ¶4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Respondent lacks rights and interest in respect of the domain name.
Complainant must first make out a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden, in effect, shifts to Respondent to show it does have rights or legitimate interests in the at-issue domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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). Since Respondent has not responded, Complainant’s prima facie evidence will act conclusively unless otherwise contradicted or logically flawed.
Respondent is not authorized or licensed to use any of Complainant’s trademarks in any way. There is also nothing in Respondent’s WHOIS information that implies that Respondent is “commonly known” by the disputed domain name. The Panel notes that the WHOIS information lists “macausite” as the registrant of the domain name and that there is no evidence before the Panel that indicates Respondent is commonly known by the disputed domain name. See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
There is nothing within the Panel’s purview that indicates that Respondent has rights or interests in respect of the at-issue domain name pursuant to any of the Policy ¶4(c) factors.. There, as noted above, Respondent uses the <facebookdeveloper.com> domain name to resolve to a website that lacking substantive content and that has been monetized with click-through ads. Respondent’s use of the disputed domain name, which is apparently designed such that Respondent may financially benefit from pay-per-click fees, does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant has satisfied its burden under Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith.
Given the fame and notoriety of Complainant's FACEBOOK mark, it is inconceivable that Respondent could have registered the <facebookdeveloper.com> domain name without actual knowledge of Complainant's rights in the mark. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)." Where, as here, the at-issue domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
Respondent’s <facebookdeveloper.com> domain name resolves to a website containing advertising for third party businesses. It appears more likely than not that at least some links on Respondent’s website are pay-per-click and thus generate revenue for Respondent when clicked by a website visitor. This circumstance constitutes evidence of Respondent’s bad faith under Policy ¶4(b)(iv). Respondent is attracting consumers, and presumably profiting financially, as a result of its creating a likelihood of confusion with Complainant’s mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel thus concludes that Respondent registered and used the Complainant’s FACEBOOK mark in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookdeveloper.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 22, 2012
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