Facebook Inc. v. Lifemotions
Case No. D2015-1685
1. The Parties
The Complainant is Facebook Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Lifemotions of Jahra, Kuwait.
The disputed domain names and (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2015. On September 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on October 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2015. On October 5, 8, 11, 12, and 22, 2015 the Respondent sent a number of email communications to the Center reiterating a desire to “transfer or cancel” the Domain Names and forwarding correspondence between the Parties. The Complainant confirmed that it did not wish to suspend the proceedings for the purpose of settlement negotiations. The Respondent did not submit any formal response. Accordingly, on October 26, 2015 the Center notified the Parties that it would be proceeding to Panel Appointment.
The Center appointed Ian Lowe as the sole panelist in this matter on November 11, 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 is the world’s leading provider of online social networking services. I t was founded in 2004 when it was originally restricted to students at Harvard University, but by 2006 Facebook was available to anyone in the world with a valid email address. As of June 2015 it had an average 968 million daily active users. The Complainant’s social networking services are provided in more than 70 languages, including Arabic. Facebook has acquired considerable reputation and renown in the Arab world, where an estimated 78 million Internet users have Facebook accounts.
The Complainant uses numerous domain names comprising “facebook”. It is also the proprietor of numerous trademark registrations for FACEBOOK in many jurisdictions throughout the world, including in the Middle East and North Africa. These include United States trademark number 3041791 FACEBOOK registered on January 10, 2006, Kuwait trademark number 76426 FACEBOOK registered on January 18, 2009, and Egypt trademark number 184974 FACEBOOK registered on June 25, 2009.
The Domain Name was created on March 5, 2008 and the Domain Name on April 12, 2009. Shortly before the filing of the Complaint, the Domain Name was pointing to a website purporting to offer a social network dedicated to users in the Arab world. The homepage of that website replicated the look and feel of previous versions of the Complainant’s official website available at “www.facebook.com”.
The Domain Name until shortly before the filing of the Complaint pointed to a social network website supposedly dedicated to medical professionals. This Domain Name is currently available for sale on the Registrar’s auction platform.
At the time of the filing of the Complaint, both Domain Names were redirecting to an online shopping website available at “www.lifemotions.net”, purportedly offering for sale a variety of goods including electronic devices and women's apparel and accessories.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its FACEBOOK trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions. However, as indicated above, in email correspondence with the Center, the Respondent indicated a wish to cancel the Domain Names, or transfer them to the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel has no hesitation in accepting that the Complainant has long-standing, uncontested rights in respect of the FACEBOOK mark both through widespread use around the world and by virtue of its registered trademarks in the United States, in the Middle East, and in many other jurisdictions. Ignoring the “.net” and “.com” suffixes for the purpose of assessing the similarity of the Domain Names and the mark in which the Complainant has rights, the Domain Names each comprise the entirety of the Complainant’s mark together with only generic words (“Arab” and “medical”, respectively). In the Panel’s view, the addition of these generic terms does not detract from the distinctiveness of the “facebook” element.
Accordingly, the Panel is satisfied that the Domain Names are both confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent previously used the Domain Names for social networking sites that had no connection with and were not authorised by the Complainant. At the time of preparation of the Complaint, both Domain Names pointed to a website, comprising the Respondent’s name, purportedly offering for sale a variety of goods. The Panel considers that none of these activities could possibly give rise to rights or legitimate interests on the part of the Respondent in Domain Names comprising the FACEBOOK mark.
The Respondent has not responded to the Complaint but in informal email communications with the Center has indicated repeatedly that it wishes to cancel the Domain Names or transfer the Domain Names to the Complainant. The Respondent has therefore failed entirely to dispel the strong prima facie case raised by the Complaint. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
In view of both the notoriety of the FACEBOOK mark and the use to which the Respondent has put the Domain Names, the Panel is in no doubt that the Respondent had in mind the Complainant and its rights in the mark when it registered the Domain Names. The use by the Respondent of the Domain Names for unauthorized social networking sites, and subsequently to resolve to a shopping portal, indicates that the Respondent has used the Domain Names comprising the Complainant’s famous mark to draw in Internet users for its own benefit and, at least in respect of the more recent use, clearly for commercial gain. The Panel considers that this amounts to paradigm bad faith registration and use.
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Date: November 22, 2015