Facebook, Inc. v. Xiamen eName Network Co., Ltd. / Shawn, Wang
Case No. D2015-1339
1. The Parties
The Complainant is Facebook, Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Xiamen eName Network Co., Ltd. of Xiamen, Fujian, China / Shawn, Wang of China
2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 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 August 7, 2015.
On August 3, 2015, the Center sent an email communication in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on August 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 9, 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.
The Complainant is a company incorporated in the United States of America, the owner of the second most visited website in the world, “www.facebook.com”, and the owner of numerous registrations worldwide dating from 2004 for its well-known trade mark FACEBOOK (the “Trade Mark”), including registrations in China, where the Respondent is apparently based.
The Complainant has also obtained widespread goodwill and reputation in respect of its “Facebook Messenger” instant messenger service application, with over 1 billion downloads on Android devices to date.
The Respondent is apparently based in China.
C. The Disputed Domain Name
The disputed domain name was registered on June 7, 2014.
D. The Website at the Disputed Domain Name
The disputed domain name resolves to a domain name parking website with sponsored links to third party commercial websites (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Trade Mark and identical to Facebook Messenger, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant made the following submissions in support of its request that English be the language of the proceeding:
(1) The disputed domain name is registered under the “.com” generic extension;
(2) The disputed domain name comprises English language terms;
(3) The content of the Website is in English; thus, the Respondent is likely to have a good understanding of the English language;
(4) The Registration Agreement is available in the English language; and
(5) Given that the activities carried out via the disputed domain name are blatantly illegitimate and detrimental to the Complainant, it would be disproportionate to require the Complainant not to submit the present Complaint in English as this would result in additional expense and unnecessary delay for the Complainant.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
The Panel would however note the Complainant’s assertions regarding the activities carried out via the disputed domain name are not, in the Panel’s opinion, relevant to the question of the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name. The Panel also finds that the Complainant has unregistered trademark rights in FACEBOOK MESSENGER for purposes of the Policy.
The disputed domain name is confusingly similar to the Trade Mark and identical to the Complainant’s unregistered FACEBOOK MESSENGER mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of “facebookmessenger” or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and provides sponsored links to third party commercial websites in order to generate pay-per-click revenue for the Respondent.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. Accordingly, the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is 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 disputed domain name be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: September 25, 2015