Facebook, Inc. v. Rafael Cuellar
Claim Number: FA1907001854906
Complainant is Facebook, Inc (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Rafael Cuellar (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2019; the Forum received payment on July 30, 2019.
On August 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.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 August 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@facebookpizza.us, postmaster@pizzafacebook.us, postmaster@pizzasfacebook.us. Also on August 1, 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.
A timely Response was received and determined to be complete on August 13, 2019.
On August 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, 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 claims to be the world’s leading provider of online social networking services. Complainant has rights in the FACEBOOK mark through its trademark registrations 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 <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names are confusingly similar to Complainant’s FACEBOOK mark as Respondent incorporates the mark in its entirety, along with the generic term “pizza” or “pizzas,” and a “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names. Respondent is not authorized or licensed to use Complainant’s FACEBOOK mark nor commonly known by 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 fails to actively use the disputed domain names.
Respondent registered and uses the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names in bad faith. Respondent has engaged in a pattern of bad faith registration as there are multiple domain names in the present case. Respondent also fails to actively use the disputed domain names. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the FACEBOOK mark.
B. Respondent
Respondent submitted its Response to the Forum via email on August 13, 2019. Respondent makes a variety of statements that are without factual or legal support and not addressed to determinations under the Policy.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain names at issue shall be transferred from Respondent to the Complainant.
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 consider UDRP precedent as applicable in rendering its decision.
Complainant claims rights in the FACEBOOK mark based upon registration of the mark with the USPTO (e.g., Reg. No. 3,041,791, registered Jan. 10, 2006). See Compl. Annex 2. 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). Complainant’s registration of the FACEBOOK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant contends Respondent’s <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names are confusingly similar to the FACEBOOK mark, as the names incorporate the mark in its entirety, along with the generic term “pizza” or “pizzas,” and a “.us” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see Facebook, et al v. Rafael Cuellar, FA 1813399 (Forum Nov. 25, 2018). The Panel determines the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names are 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 names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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 <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.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. WHOIS information can support a finding that the respondent 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 the at-issue domain names as “Rafael Cuellar,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(iii) Respondent is not commonly known by the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names.
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain names, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). This Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant also asserts Respondent’s inactive holding of the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names indicates it does not have rights or legitimate interests in the names. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(ii) or (iv). 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 contends Respondent’s domain names do not resolve to an active webpage, but merely contains the message “website coming soon!.” See Compl. Annex 8. Therefore, Respondent does not have rights or legitimate interests in the domain names per Policy ¶¶ 4(c)(ii) or (iv).
Complainant contends Respondent’s registration of the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names are part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established when there are multiple domain names at-issue and/or past UDRP history, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). There are three disputed domain names in the present case. Furthermore, Complainant provides WHOIS information of other domain names Respondent has registered and a citation to a past UDRP decision (Facebook, Inc. / Instagram, LLC v. Rafael Cuellar, FA1813399). See Compl. pg. 11, Annex 9. The Panel determines that the registration and use of the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names are part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s failure to use the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names is evidence of its bad faith. Inactive holding of a domain name can be 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).”). Complainant contends that the domain names do not resolve to an active website. See Compl. Annex 8. The Respondent’s inactive holding of the domain names are further evidence of its bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookpizza.us>, <pizzafacebook.us>, and <pizzasfacebook.us> domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: August 28, 2019
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