Facebook, Inc. v. Marios Gregoriou
Claim Number: FA2005001897043
Complainant is Facebook, Inc. (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Marios Gregoriou (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <facebookcredit.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2020; the Forum received payment on May 20, 2020.
On May 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <facebookcredit.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 May 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@facebookcredit.us. Also on May 20, 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 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 (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 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 is a world leading provider of online social-networking services. Complainant has rights in the trademark FACEBOOK through its use in commerce since 2004 and its registration of the mark with the multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) dating back to 2006. Respondent’s <facebookcredit.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s FACEBOOK mark and adds the term “credit” and the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <facebookcredit.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 uses the disputed domain name to resolve to an automobile financing application for Respondent’s own Cars USA business.
Respondent registered and uses the <facebookcredit.us> domain name in bad faith. Respondent has registered other domain names which infringe on the marks of third parties, evidencing a pattern of bad faith registrations. Respondent uses the disputed domain name to direct Internet users to Respondent’s own commercial Cars USA website. Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the highly distinctive mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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”).
Complainant asserts rights in the FACEBOOK mark based on registration of the mark with multiple trademark agencies, including the USPTO. 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 <facebookcredit.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s FACEBOOK mark and adds the term “credit” and the “.us” ccTLD. 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 <facebookcredit.us> domain name is confusingly similar to the FACEBOOK mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 that Respondent lacks rights or legitimate interests in the <facebookcredit.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 or is not 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 “Marios Gregoriou,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the FACEBOOK mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Next, Complainant argues that Respondent fails to use the <facebookcredit.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent uses the disputed domain name to resolve to a web page displaying an automobile financing application for Respondent’s own Cars USA business. Using a domain name to divert Internet users to a respondent’s website by creating a false impression of association or affiliation does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides a screenshot of the webpage that resolves from the disputed domain name and this displays an automobile financing application form. The Panel therefore finds that 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 asserts that Respondent registered and uses the <facebookcredit.us> domain name with full knowledge of Complainant’s rights in its famous and highly distinctive mark. Actual knowledge of a complainant’s rights in a famous mark at the time of registration can form the foundation for a showing of bad faith registration and use of a disputed domain name. 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 FACEBOOK mark, Complainant provides company information and media coverage and highlights Complainant’s history and the size of its revenues and user base. The Panel therefore finds that the FACEBOOK mark is quite famous and thatRespondent had actual knowledge of the mark at the time that it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <facebookcredit.us> domain name in bad faith as Respondent uses the disputed domain name to direct Internet users to Respondent’s own commercial Cars USA website. Use of a domain name to divert Internet users to a respondent’s own website for commercial gain can show bad faith registration and use under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays an automobile financing application form that on a website that is owned by Respondent and with which Complainant has no connection or affiliation. This use of the FACEBOOK trademark in the <facebookcredit.us> domain name constitutes passing off and the Panel therefore finds bad faith registration and use per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered and uses the <facebookcredit.us> domain name in bad faith based upon its claim that Respondent has registered other domain names which infringe on the marks of third parties, evidencing a pattern of bad faith registrations. Evidence that a respondent has registered other domain names which infringe on the marks of third parties can establish a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant asserts that Respondent has registered other domain names containing marks of third parties, i.e. <facebookcreditcard.com>, <blackberrymobileupdates.com>, and <vwonline.com>. However, no evidence is provided to support Respondent’s ownership or connection to these other domain names, such as WHOIS records for these domain names, and so the Panel has insufficient grounds upon which to accept the Complainant’s claim that Respondent has engaged in a pattern of conduct under Policy ¶ 4(b)(ii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookcredit.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 15, 2020
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