DECISION

 

Facebook, Inc. v. Norris Middleton / Consumers Union

Claim Number: FA2005001896277

 

PARTIES

Complainant is Facebook, Inc. (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France.  Respondent is Norris Middleton / Consumers Union (“Respondent”), Minnesota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <facebooksettlement.us>, registered with Google LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 14, 2020; the Forum received payment on May 14, 2020.

 

On May 15, 2020, Google LLC confirmed by e-mail to the Forum that the <facebooksettlement.us> domain name is registered with Google LLC and that Respondent is the current registrant of the name.  Google LLC has verified that Respondent is bound by the Google 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 May 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2020 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@facebooksettlement.us.  Also on May 15, 2020, 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 June 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a world leading provider of online social-networking services. Complainant has rights in the FACEBOOK mark through its registration of the mark with the multiple trademark agencies, including 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 <facebooksettlement.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s FACEBOOK mark and adds the term “settlement” and the country-code top-level domain (“ccTLD”) “.us.”

 

2.    Respondent lacks rights or legitimate interests in the <facebooksettlement.us> 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 fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent does not make any active use of the disputed domain name and offers no support for the “personal reasons” for which Respondent said it registered the domain name. Respondent offers to sell the disputed domain name to Complainant.

 

3.    Respondent registered and uses the <facebooksettlement.us> domain name in bad faith. Respondent offered to sell the disputed domain name in response to Complainant’s cease and desist letter. Respondent does not make any active use of the disputed domain name. Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the highly distinctive mark. Respondent uses the disputed domain name to impersonate a non-profit consumer report organization, using their contact information on the webpage of the domain name.

 

B.   Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <facebooksettlement.us> domain name is confusingly similar to Complainant’s FACEBOOK mark.

 

2.    Respondent does not have any rights or legitimate interests in the <facebooksettlement.us> domain name.

 

3.    Respondent registered or used the <facebooksettlement.us> domain name in bad faith.

 

DISCUSSION

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 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the FACEBOOK mark based on registration of the mark with multiple trademark agencies, including the USPTO (e.g. Reg. No. 3,041,791, registered Jan. 10, 2006). See Compl. Annex 2. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017)

(“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds that Complainant has established rights in the FACEBOOK mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <facebooksettlement.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s FACEBOOK mark and adds the term “settlement” and the country-code top-level domain (“ccTLD”) “.us.” The addition of a generic or descriptive term and a TLD generally fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the <facebooksettlement.us> domain name is confusingly similar to the FACEBOOK mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), 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 contends Respondent lacks rights or legitimate interests in the <facebooksettlement.us> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Norris Middleton/Consumers Union,” and there is no other evidence to suggest that Respondent was authorized to use the FACEBOOK mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).

 

The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, 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)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant argues Respondent fails to use the <facebooksettlement.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent does not make any active use of the disputed domain name and offers no support for the “personal reasons” for which Respondent said it registered the domain name. The failure to make active use of a disputed domain name may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays an inactive webpage with an error message. See Compl. Annex 6. The Panel therefore finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).

 

Complainant also argues Respondent offers to sell the disputed domain name to Complainant which indicates a lack of rights or legitimate interest in the domain name. Generally, an offer to sell a disputed domain name can show a lack of rights and legitimate interest in a disputed domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides email correspondence with Respondent in which Respondent offers to sell the domain name for $1000 in response to Complainant’s cease and desist letter. See Compl. Annex 9. Therefore, the Panel finds Respondent does not have rights or legitimate interest in the domain name per Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

Complainant argues Respondent registered and uses the <facebooksettlement.us> domain name in bad faith because Respondent offered to sell the disputed domain name in response to Complainant’s cease and desist letter. An offer to sell a disputed domain name for more than registration costs can show bad faith registration and use under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). The Panel recalls Complainant provides email correspondence with Respondent in which Respondent offers to sell the domain name for $1000 in response to Complainant’s cease and desist letter. See Compl. Annex 9. The Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).

 

Complainant argues Respondent registered and uses the <facebooksettlement.us> domain name in bad faith as Respondent does not make any active use of the disputed domain name. Inactive holding of a disputed domain name can show bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel recalls Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays an inactive webpage with an error message. See Compl. Annex 6. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Complainant argues Respondent registered and uses the <facebooksettlement.us> domain name in bad faith given Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the highly distinctive mark. Actual knowledge of a complainant’s rights in a mark at the time of registration can show bad faith registration and be evidenced by the fame of a mark. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). As evidence of the fame of the mark, Complainant provides company information and media coverage and points to Complainant’s 2 billion users. See Compl. Annex 4. The Panel therefore finds that Respondent had actual knowledge of the FACEBOOK mark at the time of registration of the disputed domain name, thus constituting bad faith registration and use under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <facebooksettlement.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 24, 2020