WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Domain Admin, Information Privacy Protection Services Limited / Wanghuade / Yanli Li

Case No. D2015-1975

1. The Parties

The Complainant is Facebook Inc. of Menlo Park, California, United States of America (the "United States"), represented by Hogan Lovells (Paris) LLP, France.

The Respondents are Domain Admin, Information Privacy Protection Services Limite of Hangzhou, Zhejiang, China; Wanghuade of Xuzhou, Jiangsu, China; Yanli Li of Xuzhou, Jiangsu, China.

2. The Domain Names and Registrar

The disputed domain names <facbookmessenger.com>, <facebookmesenger.com>, <facebookmessanger.com>, <facebookmessinger.com> and <faceboomessenger.com> are registered with Hangzhou AiMing Network Co., LTD (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2015. On November 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 10, 2015.

On November 5, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On November 5, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondents did not submit any comments within the specified due date.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint in English and Chinese, and the proceeding commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 4, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 16, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Facebook Inc., from Menlo Park, California, the United States of America, is the world's leading provider of online social networking services. The Complainant was established in 2004 and since has generated vast goodwill in the social networking services and it is with revenues reaching USD 12.5 billion in the last year. As of today, the Complainant has more than 1.49 billion monthly active users and 968 million daily active users on average worldwide.

The Complainant's main website "www.facebook.com" is ranked as the second most visited website in the world. The Complainant's social networking services are provided in more than 70 languages, including Chinese.

The Complainant is the owner of numerous trademark registrations for the FACEBOOK mark around the world. For example: United States Registration No. 3041791 – FACEBOOK, registered on January 10, 2006; United States Registration No. 3122052 – FACEBOOK, registered on July 25, 2006; Chinese Registration No. 5251162 – FACEBOOK, registered on September 21, 2009; Chinese Registration No. 6389501 – FACEBOOK, registered on March 28, 2010; International trademark Registration No. 1075094 – FACEBOOK, registered on July 16, 2010, and more.

The Complainant is the owner of numerous domain names incorporating the FACEBOOK trademark: <facebook.com>, <facebook.net>, <facebook.biz>, <facebook.cn> and many more.

The disputed domain name <facbookmessenger.com> was registered on December 31, 2011;

The disputed domain name <facebookmesenger.com> registered on August 9, 2011;

The disputed domain name <facebookmessanger.com> registered on August 9, 2011;

The disputed domain name <facebookmessinger.com> registered on March 10, 2013;

The disputed domain name <faceboomessenger.com> registered on December 31, 2011.

The disputed domain names lead Internet users to a parking websites displaying commercial links offering the Complainant's services, programs, games and apps.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to a trademark in which it has rights.

The Complainant further argues that it has acquired common law or unregistered trademark rights in the term FACEBOOK MESSENGER since at least 2011.

The Complainant argues that the disputed domain names consist of obvious misspellings of the Complainant's FACEBOOK MESSENGER trademark.

The Complainant further argues that the Respondents have no right or legitimate interests in the disputed domain names.

The Complainant further argues that the Respondents are not a licensee of the Complainant, nor have been otherwise authorized or allowed by the Complainant to make any use of its FACEBOOK or FACEBOOK MESSENGER trademarks, in a domain name or otherwise.

The Complainant further argues that the Respondents cannot assert that they were using, or have made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, as they point to parking pages containing sponsored links targeting the Complainant's FACEBOOK and FACEBOOK MESSSENGER trademarks and its instant messaging services.

The Complainant further argues that the Respondents cannot conceivably claim that they are commonly known by the Complainant's trademark, and that it is unlikely that the Respondents had secured or even sought to secure any trademark rights in the terms FACEBOOK or FACEBOOK MESSENGER.

The Complainant further contends that the Respondents cannot assert they have made or are currently making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of the Complainant.

The Complainant further argues that the Respondents registered and are using the disputed domain name in bad faith.

The Complainant further contends that its FACEBOOK trademark is highly distinctive and famous throughout the world and well before the disputed domain names were registered by the Respondents, and that it rapidly acquired considerable goodwill and renown worldwide, including in China.

The Complainant further argues that it will be inconceivable for the Respondents to argue that they did not have knowledge of the Complainant's FACEBOOK or FACEBOOK MESSENGER trademarks at the time of registration of the disputed domain names in 2011.

The Complainant further argues that the fact that the disputed domain names <facebookmesenger.com> and <facebookmessanger.com> were registered on August 9, 2011, precisely on the same day the Complainant's FACEBOOK MESSENGER standalone instant messaging app was launched, is a strong indication of the Respondent's awareness of the Complainant's rights in the term FACEBOOK MESSENGER.

The Complainant further argues that the fact the Respondents registered typo squatted versions of the Complainant's FACEBOOK MESSENGER trademark is a strong indication that the Respondents were undoubtedly aware of the Complainant's right at the time or registration.

The Complainant further argues that the Respondents' knowledge of the Complainant's rights at the time of registration indicates the Respondents deliberately chose to register the disputed domain names to take advantage of common mistakes made by Internet users searching for the Complainant instant messaging app online, all in order to benefit from the goodwill attached to the Complainant's trademark.

The Complainant further argues that the Respondents are using the disputed domain names to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of their websites.

The Complainant further argues that the Respondents are responsible for the content appearing on the disputed domain names, regardless of whether the sponsored links are automatically generated or not.

The Complainant further argues that it is a strong indication of the Respondents' bad faith the fact that the underlying registrant has concealed its identity by means of a privacy protection service.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Preliminary Issues

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain names <facbookmessenger.com>, <facebookmesenger.com>, <facebookmessanger.com>, <facebookmessinger.com>, <faceboomessenger.com> consist of Latin-script letters, rather than Chinese characters;

b) The disputed domain names resolve to websites in English, all includes commercial links in English and a copyright notice in the English language. All are clear evidence that the Respondents are aware of the meaning of the words in English and are likely to understand English.

c) The Respondents did not respond or object to the Complainant's request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondents for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Filing a Complaint against Multiple Respondents

Paragraph 3(c) of 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. Paragraph 4(f) of the Policy provides that where there are multiple disputes between a complainant and respondent, either party may petition to consolidate the disputes before a single administrative panel. Under paragraph 4(f) of the Policy the consolidation petition is made to the first administrative panel appointed to hear a pending dispute between the parties, this administrative panel may consolidate before it any or all such disputes in its sole discretion, provided the disputes are governed by the Policy. Under paragraph 10(e) of the Rules it is for the panel to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and Rules.

In order to file a single complaint by multiple complainants or against multiple respondents, the complaint must meet the following criteria:

(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.

The Panel finds that the evidence provided by the Complainant indicates that the disputed domain names resolves to similar websites and are subject to common control, and second, taking into consideration the Respondents failure to submit a response, the consolidation would be fair and equitable to all parties. Thus, in this circumstances the Panel accepts the Complaint against multiple Respondents. (See Fulham Football Club (1987) Limited, et.al v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331, MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc., WIPO Case No. D2009-0985, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant is the owner of numerous trademark registrations for the FACEBOOK mark around the world. For example: United States Registration No. 3041791 – FACEBOOK, registered on January 10, 2006; United States Registration No. 3122052 – FACEBOOK, registered on July 25, 2006; Chinese Registration No. 5251162 – FACEBOOK, registered on September 21, 2009; Chinese Registration No. 6389501 – FACEBOOK, registered on March 28, 2010; International Trademark Registration No. 1075094 – FACEBOOK, registered on July 16, 2010, and more.

In addition to the above, the Complainant claims also common law or unregistered trademark rights in FACEBOOK MESSENGER, which has become a distinctive identifier of the Complainant's instant messaging service as a result of its extensive use worldwide, particularly online, since at least 2011.

Based on the evidence submitted to the Panel, the Complainant's intense use of the FACEBOOK MESSENGER trademark to offer its social networking chat services, and based on a search the Panel has conducted, the Panel is of the opinion that the Complainant has gained rights in the FACEBOOK MESSENGER mark such that it has become a well-known trademark in connection to social networking chat services.

The disputed domain name <facbookmessenger.com> integrates the Complainant's FACEBOOK trademark and/or FACEBOOK MESSENGER well-known trademark as a dominant element. The disputed domain name differs from the FACEBOOK MESSENGER well-known trademark by the deletion of the letter "e" from the FACEBOOK trademark and the additional generic Top-Level Domain ("gTLD") suffix ".com".

The disputed domain name <facebookmesenger.com> integrates the Complainant's FACEBOOK trademark as a dominant element. The disputed domain name differs from the FACEBOOK trademark by the addition of the "mesenger" word (a misspelled version of "Messenger") and the additional gTLD suffix ".com".

The disputed domain name <facebookmessanger.com> integrates the Complainant's FACEBOOK trademark as a dominant element. The disputed domain name differs from the FACEBOOK trademark by the addition of the "messanger" word (a misspelled version of "Messenger") and the additional gTLD suffix ".com".

The disputed domain name <facebookmessinger.com> integrates the Complainant's FACEBOOK trademark as a dominant element. The disputed domain name differs from the FACEBOOK trademark by the addition of the "messinger" word (a misspelled version of "Messenger") and the additional gTLD suffix ".com".

The disputed domain name <faceboomessenger.com> integrates the Complainant's FACEBOOK MESSENGER well-known mark as a dominant element. The disputed domain name differs from the FACEBOOK MESSENGER well-known trademark by the deletion of the letter "k" from the FACEBOOK trademark and the additional gTLD suffix ".com".

The Panel finds that the disputed domain names integrates the Complainant's FACEBOOK and FACEBOOK MESSENGER well-known mark or an obvious misspell of the FABECOOK or FACEBOOK MESSENGER well known mark in their entirety, as a dominant element.

The Panel is of the opinion that the fact that the disputed domain names are missing the letters "e" or "s" or "k" from the FACEBOOK trademark or the replacement of the letter "e" with "i" or "a" in the "Messenger" word does not avoid confusing similarity. Such missing elements generating spelling mistakes are only designed to obviate the Complainant's rights and should considered as non-significant omissions, which are to be treated as non-significant elements added to disputed domain names.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: "The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant's YAHOO! mark), the addition of the descriptive word 'page' does not at all serve to remove the confusing similarity with the Complainant's mark, all the more in the context of webpages or websites". (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).

Also see: "the Disputed Domain Name integrates the Trademark in full to which is added a suffix (i.e. (shows), which is a generic term. The Panel consequently holds that the addition of this suffix does not distinguish the Disputed Domain Name from the Trademark to avoid a confusing similarity". (See Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227).

The addition of the gTLD ".com" to the disputed domain names does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since the use of a gTLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview 2.0, paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondents lack rights or legitimate interests in respect of the disputed domain names and the Respondents had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondents to use the FACEBOOK and/or FACEBOOK MESSENGER well-known marks, or a variation thereof.

The Respondents have not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant's prima facie case.

Accordingly, the Panel finds that the Complainant has shown that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondents registered and are using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondents registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the FACEBOOK trademark since at least 2006. This trademark has been used worldwide extensively and has gained significant good will. It is suggestive of the Respondents' bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). The suggestive nature of the Respondents knowledge is heightened by the notoriety of the Complainant's FACEBOOK trademark.

The disputed domain names are confusingly similar to the Complainant's trademarks. Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Another indication for the Respondents' bad faith is raised from the incorporation of the Complainant's well-known trademark into the disputed domain names by the Respondents who have no plausible explanation for doing so (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

The disputed domain names lead Internet users to websites displaying commercial links of prima facie Complainant's services. From the evidence submitted by the Complainant and according to a search conducted by the Panel, it seems that the Respondents are using the disputed domain names to promote others' competing services and not the Complainant's services. The Respondents' use of the FACEBOOK trademark on their websites is clear evidence that the Respondents have registered and are using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making in its FACEBOOK MESSENGER well-known trademark, and indicates that the Respondents' primary intent with respect to the disputed domain names is to trade off the value of these. The Respondents' actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".

Indeed, "when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Panel also finds that the Respondents' attempt to attract, for commercial gain, Internet users to their websites with the intent of creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondents' websites falls under paragraph 4(b)(iv) of the Policy.

Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant's trademarks in the disputed domain names and the confusing similarity between the disputed domain names and the Complainant's marks, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <facbookmessenger.com>, <facebookmesenger.com>, <facebookmessanger.com>, <facebookmessinger.com> and <faceboomessenger.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: December 31, 2015