Westmore · UDRP DecisionFacebookmailive.com
The Panel ordered transfer of <facebookmailive.com>. It found the domain confusingly similar to the famous FACEBOOK mark because it incorporated the mark in full and added the misspelled combination “mailive,” consisting of terms related to Complainant’s activities. Respondent lacked rights or legitimate interests, and the domain’s passive holding, combined with the mark’s renown, Respondent’s default, the absence of any plausible good-faith use, and the nature of the domain supported bad-faith registration and use.
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The decision illustrates how passive holding can satisfy bad-faith use when a domain fully incorporates a famous mark, adds terms associated with the complainant’s services, and is unsupported by any explanation or evidence of legitimate or contemplated good-faith use. It also records the procedural handling of a domain that expired during a pending UDRP case and was renewed by the complainant to preserve the proceeding.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Facebook, Inc. v. Eduard Vokhmin Case No. D2021-3464 1. The Parties Complainant is Facebook, Inc., United States of America (“United States”), represented by Tucker Ellis, LLP, United States. Respondent is Eduard Vokhmin, Russian Federation. 2. The Domain Name and Registrar The disputed domain name <facebookmailive.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 26, 2021. The Center appointed José M. Checa as the sole panelist in this matter on December 7, 2021. 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 Panel also notes that the verification received from the Registrar showed that the expiry date of the disputed domain name was October 25, 2021 i.e. during the course of this dispute. Paragraph 3.7.5.7 of the ICANN Registrar Accreditation Agreement (RAA) provides, inter alia, that “In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WhoIs contact information for the registrant will be removed, and the WhoIs entry will indicate that the name is subject to dispute”. As per communication of October 26, 2021, the Center sought appropriate information from the Registrar regarding any action required by the Parties to renew or restore the disputed domain name so that the present UDRP procedure could continue, and that the domain name would be placed in Registrar LOCK status and would remain in such status for the pendency of this UDRP procedure. On November 25, 2021, the Registrar informed the Center that the disputed domain name had been renewed by Complainant and that it was in Registrar lock. The Panel finds that all procedural steps have been properly complied with in order to proceed to a decision (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0 ”), Section 4.20). 4. Factual Background Complainant operates the Facebook social networking website and mobile application and it owns numerous trademark registrations and common law rights in the United States and other countries around the world for the FACEBOOK mark. Complainant owns United States Trademark Registration No. 3122052, which is registered on July 25, 2006, claiming first use in 2004.It also owns many domain names, including <facebook.com>, <facebookmail.com>, <facebooklive.com>, <facebook.org> and <facebook.net> among others. The disputed domain name was registered on October 25, 2020 and it is inactive. 5. Parties’ Contentions A. Complainant Complainant has provided evidence of trademark registrations for FACEBOOK around the world. Complainant operates the social networking website and mobile application and its brand is unquestionably famous and recognized around the world as signifying services provided by Complainant. The FACEBOOK Mark ranked 13th in Interbrand’s current Best Global Brands report. Complainant also owns the domain names <facebookmail.com>, which it uses to send email notifications to Facebook users, and <facebooklive.com>, which it uses in connection with Facebook Live, a feature that allows Facebook users to stream videos live on a Facebook Page, in a group or an event. According to the Complaint, the disputed domain name is confusingly similar to the trademark FACEBOOK, the addition of the terms “mailive” (which is a misspelled combination of the descriptive terms “mail” and “live” that merely omits the letter “l” at the end of the word “mail” or the beginning of the word “live”) being insufficient to avoid similarity, especially given the fact that those terms are relevant to Complainant’s services. The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name is irrelevant to the confusingly similar analysis. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s FACEBOOK Mark. Complainant confirms that it has no legal relationship with Respondent and that Respondent is not commonly known by the disputed domain name. As the disputed domain name is inactive, Complainant argues that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Complainant further adds that Respondent – given the fame of Complainant’s FACEBOOK Mark – was or should have been aware of the FACEBOOK trademark prior to registering the disputed domain name and also, that there are no circumstances under which Respondent’s use of the disputed domain name could plausibly be in good faith under the Policy. In addition, the registration of a confusingly similar domain name that is so obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. Complainant further argues that it has long been held in UDRP decisions that the passive holding of a domain name that incorporates a registered trademark, without a legitimate purpose, may indicate that the domain name is being used in bad faith. Respondent’s failure to use the disputed domain name for any purpose is evidence of bad faith registration and use of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has provided evidence of its trademark registrations for FACEBOOK establishing clear trademark rights in the mark. The Panel also acknowledges that FACEBOOK is a famous brand. The Panel finds that for the purpose of considering whether the disputed domain name is identical or confusingly similar to Complainant’s FACEBOOK mark, the gTLD “.com” is disregarded under the first element confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“ WIPO Overview 3.0 ”), section 1.11.1). The Panel also finds that the addition of the terms “mailive” (a misspelling of the combination of the terms “mail” and “live”) do not prevent a finding of similarity between Complainant’s trademark and the disputed domain name ( WIPO Overview 3.0 , section 1.8). Complainant’s entire mark is included at the beginning of the disputed domain name, it is fully recognizable, and it is followed by additional terms related to Complainant’s activities. The Panel accordingly finds that the disputed domain name is confusingly similar to Complainant’s trademark as required by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has put forward unrebutted assertions that it has not granted any license or authorization to Respondent to register the domain name or otherwise make use of its trademark, or that Respondent is not commonly known by the disputed domain name. The fact that the disputed domain name is inactive cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, particularly where a famous trademark is fully incorporated in the disputed domain name along with additional terms within the trademark owner’s field of commerce. The Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests to the disputed domain name ( WIPO Overview 3.0 , section 2.1). Respondent is in default and thus, it has not put forward any circumstance that would indicate any right or legitimate interest to the disputed domain name. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As pointed out in the Complaint, based on the wide use of Complainant’s FACEBOOK brand, it is very unlikely that Respondent was not aware of Complainant’s brand. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith ( WIPO Overview 3.0 , section 3.1.4). In addition, even if the disputed domain name is inactive, circumstances present in this case such as (i) the nature of the disputed domain name (widely used corporate brand followed by dictionary terms), (ii) a clear absence of rights or legitimate interests coupled with no explanation for Respondent’s choice of the disputed domain name, (iii) the failure of Respondent to provide any evidence of actual or contemplated good-faith use, and (iv) the implausibility of any good faith use to which the disputed domain name may be put further support a finding that Respondent’s registration and use of the disputed domain name was in bad faith ( WIPO Overview 3.0 , section 3.3). Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with 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 name <facebookmailive.com> be transferred to Complainant. José M. Checa Sole Panelist Date: December 21, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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