Facebook, Inc. v. Pintu Prajapati
Claim Number: FA1712001762337
Complainant is Facebook, Inc. (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Pintu Prajapati (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <facebookhelp.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2017; the Forum received payment on December 12, 2017.
On December 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <facebookhelp.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@facebookhelp.us. Also on December 13, 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 January 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 usTLD Dispute Resolution Policy (“Rules”). 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
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).
Respondent’s <facebookhelp.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s FACEBOOK mark in its entirety and appends the generic term “help” and the “.us” country code top-level-domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <facebookhelp.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its FACEBOOK 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 uses the disputed domain name to address a website purportedly providing technical support services but that in fact is part of a scam to perpetrate illegitimate activities, including hacking Facebook users' accounts, installing malware or other types of malicious activities compromising Facebook users' online safety as well as to that seeks to illegitimately gain access to Complainant’s users’ personal and potentially sensitive information. The website provides a toll free number that is connected to Complainant.
Respondent registered and uses the <facebookhelp.us> domain name in bad faith. Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the corresponding domain name under the .US extension for the United States. Respondent uses the disputed domain name to pass itself off as Complainant to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the endorsement of the websites. Respondent had actual knowledge of Complainant’s rights in the FACEBOOK mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FACEBOOK mark as evidenced by its registration of such mark with the USPTO.
Complainant’s rights in the FACEBOOK mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the at-issue domain name to address a website that is ultimately used to defraud visitors into giving up personal proprietary information.
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.
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 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant registered its FACEBOOK mark with the USPTO. Such registration is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name starts with Complainant’s FACEBOOK trademark, adds the descriptive term “help” and concludes with the country code top-level domain name “.us”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Notably, the term “help” suggests Complainant’s mark since those using Complainant’s services might require “help” in that regard; Complainant provides such at <www.facebook.com/help>. The presence of the term “help” in the domain name thus adds to the confusion caused by the domain name’s inclusion of Complainant’s FACEBOOK trademark. Furthermore, top level names are a necessary part of a domain name’s syntax and have long been held irrelevant to UDRP analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <facebookhelp.us> domain name is confusingly similar to Complainant’s FACEBOOK trademark. See AOL Inc. v. Hi Techsoft Services, FA 1681342 (Forum Aug. 5, 21, 2016) ("Respondent’s <helpaol.us> domain name is confusingly similar to the AOL mark under Policy ¶ 4(a)(i). Respondent’s <helpaol.us> domain name adds the generic/descriptive word “help” and adds the “.us” ccTLD. "); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Pintu Prajapati” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <facebookhelp.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the <facebookhelp.us> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <facebookhelp.us> domain name addresses a website that is purportedly providing technical support services, but in fact is part of a scam to gain access to internet users’ personal and potentially sensitive information, ultimately for Respondent financial gain. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below there are sufficient Policy ¶ 4(b) related circumstances, as well as other evidence, from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above, in passing itself off as Complainant Respondent uses its <facebookhelp.us> domain name to trick internet users into giving up proprietary personal data for Respondent’s financial benefit. Using the confusingly similar<facebookhelp.us> domain name in this manner demonstrates Respondent’s bad faith registration and use of such domain name per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also, Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461 ("bad faith registration and use of the disputed domain names is further indicated by the fact that there is strong suspicion of the Respondents using the disputed domain names in an elaborate common phishing scam").
Additionally, Respondent had actual knowledge of Complainant’s rights in the FACEBOOK trademark when it registered the at-issue domain name. Respondent’s prior knowledge is evident primarily from the notoriety of Complainant’s FACEBOOK trademark and Respondent’s overt attempt to pass itself off as Complainant. Further, in light of the fame and wide use of Complainant's FACEBOOK mark it is inconceivable that Respondent could have registered the at-issue domain name without actual knowledge of the FACEBOOK mark. Registering and using a confusingly similar domain name, with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookhelp.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 10, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page