Facebook, Inc. v. chunyuan jiang / jiangchunyuan / N/A / Whois Agent / YourJungle Privacy Protection Service
Claim Number: FA1303001492197
Complainant is Facebook, Inc. (“Complainant”), represented by Aaron M. Fennimore of Cooley LLP, California, USA. Respondent is chunyuan jiang / jiangchunyuan / N/A / Whois Agent / YourJungle Privacy Protection Service (“Respondent”), China and the United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <facebock.com> registered with Domainstream.Ca Inc.; <faceboky.com> and <facebookpeople.com> registered with Go Australia Domains, Llc; <facebookea.com> registered with Domains2Register.Com Inc.; <facebookmex.com> registered with Namegame.Ca Internet Services Corporation; <facebookmobile.com> registered with Deerwood Investments Llc; <facebookmsn.com> registered with Go Montenegro Domains, Llc; <facebuok.com> registered with Bigrock Solutions Limited; <facekoob.com> and <fecabok.com> registered with Enom, Inc.; <faceookc.com> registered with Namejumper.Com, Inc; <fastfacebookproxy.com> registered with Godaddy.Com, Llc; and <feybook.com> registered with Notsofamousnames.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2013; the National Arbitration Forum received payment on April 1, 2013.
On March 29, 2013, Godaddy.Com, Llc confirmed registration of <fastfacebookproxy.com>, <facebookpeople.com> and <facebookmsn.com>; Enom, Inc. confirmed registration of <facekoob.com> and <fecabok.com>; Go Australia Domains, Llc confirmed registration of <faceboky.com> and <facebookpeople.com>; Go Montenegro Domains, Llc confirmed registration of <facebookmsn.com>. On March 30, 2013, Bigrock Solutions Limited confirmed registration of <facebuok.com>. On Apr 1, 2013, Domains2Register.Com Inc. confirmed registration of <facebookea.com>; Deerwood Investments Llc confirmed registration of <facebookmobile.com>; Namegame.Ca Internet Services Corporation confirmed registration of <facebookmex.com> and <faceookc.com>. On April 15, 2013, Notsofamousnames.Com Llc confirmed registration of the <feybook.com> Domainstream.Ca Inc. Domainstream.Ca Inc., Go Australia Domains, Llc, Domains2Register.Com Inc., Namegame.Ca Internet Services Corporation, Deerwood Investments Llc, Go Montenegro Domains, Llc, Bigrock Solutions Limited, Enom, Inc., Namejumper.Com, Inc, Godaddy.Com, Llc, Notsofamousnames.Com Llc have all verified that the listed registrant is bound by the respective registration agreements 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 May 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2013 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@facebock.com, postmaster@faceboky.com, postmaster@facebookea.com, postmaster@facebookmex.com, postmaster@facebookmobile.com, postmaster@facebookmsn.com, postmaster@facebookpeople.com, postmaster@facebuok.com, postmaster@facekoob.com, postmaster@faceookc.com, postmaster@fastfacebookproxy.com, postmaster@fecabok.com, postmaster@feybook.com. Also on May 14, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant has provided evidence that Respondent is a single entity or individual operating under a slew of registrant names and addresses located in either China or the United States. Respondent’s name was the same in all of the WHOIS information for all of the domain names, and was only altered upon submission of the Complaint in this proceeding. Respondent makes use of five different e-mail accounts, with four these e-mail addresses containing substantially the same name as one another—all start “Jcy”. The Panel finds that the domain names are all subject to the unified control of a single individual/entity that uses different aliases on the Internet. Accordingly, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus will proceed with the instant proceedings.
A. Complainant makes the following assertions:
1. Respondent’s <facebock.com>, <faceboky.com> , <facebookpeople.com>, <facebookea.com>, <facebookmex.com>, <facebookmobile.com>, <facebookmsn.com>, <facebuok.com>, <facekoob.com>, <fecabok.com>, <faceookc.com>, <fastfacebookproxy.com> , <feybook.com> domain names, the domain names at issue, are confusingly similar to Complainant’s FACEBOOK mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates the world’s largest social networking business through its FACEBOOK mark and corresponding websites. Since 2004, Complainant has cultivated the FACEBOOK mark into one of the most widely recognized brands in the United States. Complainant’s FACEBOOK services are offered in over seventy languages and have more than one billion users around the world. Complainant owns a number of trademark registrations for the FACEBOOK mark around the world, including with China’s State Administration for Industry and Commerce (“SAIC”) Reg. No. 5,251,162 registered on Sept. 21, 2009; United States Patent & Trademark Office (“USPTO”) Reg. No. 3,122,052 registered on July 25, 2006.
Respondent made the following domain name registrations, all of which are now disputed:
Each of the <fastfacebookproxy.com>, <facebookmobile.com>, <facebookpeople.com> merely add descriptive but non-distinctive terms to the FACEBOOK mark; Respondent seeking merely to capitalize on the connection between the FACEBOOK mark and the relationship these terms have to the mark. All of the remaining domain names simply add a random assortment of letters, or misspellings, to the FACEBOOK mark. In particular, the <feybook.com> domain name seeks to capitalize on the phonetic similarity between the FACEBOOK mark and this domain name.
Respondent is not commonly known by any of these disputed domain names. There is nothing in the WHOIS information to suggest Respondent has some nickname or trade name that incorporates these domain names. Complainant has not otherwise authorized the use of its FACEBOOK mark to be used in domain names by Respondent. All of the disputed domain names resolve to pages that lack any substantive content at all. These domain names are either monetized through hyperlink advertisements, or are simply being advertised for sale. Respondent seeks to attract commercial gains by confusing Internet users into a likelihood of associating these domain names with Complainant and its FACEBOOK mark. Respondent had to have had actual knowledge of Complainant’s rights in the FACEBOOK mark. The fame and unique qualities of the FACEBOOK mark make it unlikely that Respondent would have registered so many infringing domain names without actual knowledge. Respondent alternatively has constructive knowledge of the famous 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 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.”).
Complainant operates the world’s largest social networking business through its FACEBOOK mark and corresponding websites. Since 2004, it has cultivated the FACEBOOK mark into one of the most widely recognized brands in the United States. Complainant’s services under the FACEBOOK mark are offered in over seventy languages and have more than one billion users around the world. Complainant owns a number of trademark registrations for the FACEBOOK mark around the world, China’s SAIC (Reg. No. 5,251,162 registered September 21, 2009); the USPTO (Reg. No. 3,122,052 registered July 25, 2006). Since Complainant has shown USPTO and SAIC trademark registrations (among the many other national registrations provided), and Respondent’s WHOIS information lists only the US and China as its dwellings, Complainant has shown rights in the FACEBOOK mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Each of the <fastfacebookproxy.com>, <facebookmobile.com>, <facebookpeople.com> domains merely adds descriptive but non-distinctive terms to the FACEBOOK mark. All of the remaining domain names simply add a random assortment of letters, or misspellings, to the FACEBOOK mark. Complainant notes, in particular, that the <feybook.com> domain name seeks to capitalize on the phonetic similarity between the FACEBOOK mark and this domain name. All of the domain names feature the generic top-level domain (“gTLD”) “.com,” which is an irrelevant change to the mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The misspelling of the FACEBOOK mark in the <facebock.com>, <faceboky.com>, <facebuok.com>, <facekoob.com>, <faceookc.com>, and <fecabok.com> domain names enhances the confusing similarity between the names and the mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant). The phonetic similarity between the <feybook.com> domain name and the FACEBOOK mark enhances the domain name’s confusing similarity. See VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer). The <facebookea.com>, <facebookmex.com>, <facebookmobile.com>, <facebookmsn.com>, <facebookpeople.com>, and <fastfacebookproxy.com> domain names do not escape confusing similarity by merely combining the FACEBOOK mark with generic/descriptive terms, or the addition of the unrelated EA or MSN marks. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). As a result of the aforementioned alterations to the FACEBOOK mark, the Panel concludes that all of the disputed domain names are confusingly similar to the FACEBOOK mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 (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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
There is nothing in the WHOIS information to suggest Respondent has some nickname or trade name that incorporates these domain names. Complainant has not otherwise authorized the use of its FACEBOOK mark to be used in domain names by Respondent. The WHOIS information reflects the possibility that Respondent is has used the names “chunyuan jiang,” “jiangchunyuan,” “N/A,” “Whois Agent,” or “YourJungle Privacy Protection Service,” to designate the registrant’s identity in the WHOIS information associated with the disputed domain names. As demonstrated by the variety of names used in the WHOIS information for the domain names, it is clear that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
All of the disputed domain names resolve to pages that lack any substantive content. These domain names are either monetized through hyperlink advertisements, or are simply being advertised for sale. The <facebookea.com>, <facebookmex.com>, <facebookmsn.com>, <facebuok.com>, <faceookc.com>, <fastfacebookproxy.com>, <feybook.com> domain names resolve to a template website that is use to promote generic hyperlinks. These random hyperlinks found at the websites resolving from the <facebookea.com>, <facebookmex.com>, <facebookmsn.com>, <facebuok.com>, <faceookc.com>, <fastfacebookproxy.com>, <feybook.com> domain names domain names do not create a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor any Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The <faceboky.com> and <facebookpeople.com> domain names feature a Chinese and English language advertisement that the domains are for sale. Respondent’s decision to hold these two domain names strictly for purposes of resale is neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The <faicbok.com> domain name resolves to an inactive error page. Respondent cannot base a Policy ¶ 4(a)(ii) right or legitimate interest in the inactive holding of this domain name. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
With respect to the disputed <facekoob.com>, <facebookmobile.com>, and <facebock.com> domain names the Panel finds that these domain names are used in an illegitimate hosting of hyperlinks as discussed above. See, e.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
While Complainant does not explicitly argue that all of the domain names violate the provisions of Policy ¶ 4(b), the Panel finds that it is not necessary for Complainant to prove that each domain name meets the bad faith criteria of Policy ¶ 4(b), so long as Complainant shows bad faith through some method. See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
It appears to the Panel that Respondent seeks to generate commercial gains by confusing Internet users and creating a likelihood that website visitors will associate these domain names with Complainant and its FACEBOOK mark. As referenced above in the Panel’s findings regarding Policy ¶ 4(a)(ii), Complainant has evidence that all that the <facebookea.com>, <facebookmex.com>, <facebookmsn.com>, <facebuok.com>, <faceookc.com>, <fastfacebookproxy.com>, <feybook.com> domain names are used in connection with the promotion of hyperlinks. The Panel agrees with Complainant that these <facebookea.com>, <facebookmex.com>, <facebookmsn.com>, <facebuok.com>, <faceookc.com>, <fastfacebookproxy.com>, <feybook.com>domain names were all registered and used with the intention of confusing Internet users into believing the hyperlinks were somehow endorsed or supported by Complainant’ and its FACEBOOK mark, demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The <faicbock.com> domain name does not resolve to an active website. Even when there is no active use of an infringing domain name such as <faicbock.com>, Policy ¶ 4(b)(iv) bad faith can be found when such a use would immediately give rise to a likelihood of confusion amongst Internet users. See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Respondent must have known about Complainant’s rights in the FACEBOOK mark. The fame and unique qualities of the FACEBOOK mark make it unlikely that Respondent would have registered so many infringing domain names without actual knowledge. In any event, Respondent had constructive knowledge of the famous FACEBOOK mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark and use of variations of Complainant’s marks within the disputed domain names, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebock.com>, <faceboky.com>, <facebookea.com>, <facebookmex.com>, <facebookmobile.com>, <facebookmsn.com>, <facebookpeople.com>, <facebuok.com>, <facekoob.com>, <faceookc.com>, <fastfacebookproxy.com>, <fecabok.com>, and <feybook.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 12, 2013
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