Council of Country Code Administrators ( CoCCA ) Dispute Resolution Service CoCCA Case No. mn-2015-01 facebook.mn 1. Parties Complainant: Facebook, Inc 1601 Willow Road Menlo Park California 94025 United States of America Represented by: Mr David Taylor Respondent: Liu Jiapeng Fuxing Lou Shaoshui Dong Road Room 503 Unit 2, Shaoyang City Hunan Pro, 422000 China Represented personally 2. Domain Name facebook.mn ("the Domain Name") 3. Procedural history 3.1. The Complaint was lodged on February 23, 2015 and has failed the amicable resolution between Respondent and Complainant. 3.2. On May 6, 2015 Complainant requested a binding arbitration. 3.3. On April 23, 2015 Respondent was notified of the validated Complaint. No formal response was received from Respondent. 3.4. On June 17, 2015 Clive Elliott QC confirmed his availability and was appointed as Expert. 3.5. Complainant paid CoCCA the appropriate fee on May 27, 2015 for a decision of an Expert, pursuant to the provisions of the Acceptable Use Policy ( AUP ). 1
4. Factual background 4.1. Respondent registered the Domain Name on November 4, 2012. 5. Parties contentions 5.1. Complainant 5.1.1. Complainant advises that it is an American company incorporated in Delaware, United States of America. It states that its Facebook website, which operates under and features the Facebook Trade Mark as well as the <facebook.com> domain name, allows computer and internet users to communicate with existing friends, make new friends, join and organize groups and events as well as share their personal profiles, statuses, activities, photos, links and videos. 5.1.2. It is asserted that Facebook, Inc. is the world s leading provider of online social networking services with more than a 1.28 billion registered users around the world, including more than 800,000 registered users in Mongolia (that is almost one third of the total Mongolian population) and more than 900,000 registered users in China, where Respondent is based. Since it was founded in February 2004, Facebook has constantly grown and acquired notoriety. It has a global presence as well as very considerable reputation and goodwill worldwide in both its services and its brands. The www.facebook.com website is ranked as the most visited website in the world as well as in Mongolia and the sixth most visited website in China, according to web information company SimilarWeb. 5.1.3. Complainant contends that the FACEBOOK brand has acquired considerable renown and goodwill worldwide. It is said that the explosive popularity and consumer recognition of the FACEBOOK name and website have made FACEBOOK one of the most famous online trade marks in the world. 5.1.4. Reflecting its global reach, Complainant has owned, since 2004 and to date, over 190 domain names consisting of the term FACEBOOK (<facebook.com>, <facebook.org>, <facebook.net>, and <facebook.biz>). 5.1.5. It is asserted that between 9 and 10 July 2014, Complainant's lawyers received three emails from a person named Rose offering to sell the Domain Name. Complainant conducted a preliminary search on Respondent and found that, in addition to the Domain Name, Respondent was also the registered owner of the domain names <dfacebook.co>, <favebook.dk> and <fbgirls.in> (which has since lapsed) as well as of 37 domain names that potentially infringe the rights of third parties. 5.1.6. Complainant further asserts that on 24 July 2014, Complainant s lawyers sent a letter by registered mail and by email to Respondent, requesting him 2
to cease and desist any and all activity conducted in relation to the Domain Name and the domain names <dfacebook.co>, <favebook.dk> and <fbgirls.in> as well as transfer these domain names to Complainant within ten days. 5.1.7. No response was received from Respondent to this letter. After the deadline lapsed, Complainant's lawyers contacted Respondent by telephone who said that he would sell the four domain names included in the letter for USD 1,000 each and added that, if Complainant did not want to pay money, Complainant's lawyers should not bother him again. In view of Respondent's reply, Complainant decided to file the present Complaint to obtain transfer of the Domain Name under the policies set out for the CoCCA Complaint Resolution Service. 5.1.8. As noted above, the Domain Name was registered on 4 November 2012, at least 8 years after Complainant started its activities. The Domain Name points to a web page advising that the Domain Name is for sale and providing a link to a page allowing an inquiry to be submitted in this respect (http://www.facebook.mn/sale-inquiry#f). 5.1.9. Complainant advises that the Domain Name is also being used to point to a dynamic page, that is to say that the redirection of the Domain Name changes every time it is entered into a web browser. A notice "Redirecting to Advertiser" is displayed before the various redirections and thus it is submitted that Respondent earns a certain sum of money every time an internet user accesses the advertised page via www.facebook.mn. 5.1.10. Complainant submits that Respondent is violating the terms of paragraph 1 of the AUP, in particular 1.1(2)(a)(ii), 1.1(2)(b)(ii),(iii) and (iv), as well as 1.1(3), as substantiated below: 5.1.11. The Domain Name is identical or confusingly similar to a trade or service mark in which Complainant has uncontested rights (1.1(2)(a)) 5.1.12. Complainant has registered numerous trade marks in the term FACEBOOK to protect its interests around the world, including: FACEBOOK Chinese trade mark number 5251161 registered on 07 July 2009; FACEBOOK Chinese trade mark number 5251162 registered on 21 September 2009; FACEBOOK Chinese trade mark number 6389501 registered on 28 March 2010; and FACEBOOK International trade mark number 1075094 covering China registered on 16 July 2010. 5.1.13. The Domain Name reflects the Facebook Trade Mark in its entirety. The mere addition of the.mn suffix does not constitute a sufficient element of distinctiveness which should be taken into consideration when evaluating the similarity of Facebook s trade marks with the Domain Name. Complainant therefore asserts that the Domain Name is identical to 3
Complainant s Trade Marks in accordance with paragraph 1.1(2)(a) of the AUP. 5.1.14. The AUP sets out a non-exhaustive list of circumstances that may demonstrate that the use of a domain name identical to a trade mark in accordance with paragraph 1.1(2)(a) is prohibited. Complainant relies on paragraph 1.1(2)(a) (ii), and submits as follows: 5.1.15. Respondent's use of the Domain Name deceives or confuses others in relation to goods or services in respect of which an unregistered trade mark or service mark has become distinctive of the goods or services of Complainant, and in which Complainant has established a sufficient reputation in Mongolia, against the wishes of Complainant. Each of these elements is satisfied. 5.1.16. The term FACEBOOK is highly distinctive and well-known around the world, including in Mongolia and in China where Respondent resides, and it would therefore be inconceivable for Respondent to argue that the term FACEBOOK has not become distinctive of Complainant's social networking service. 5.1.17. Complainant started to operate in February 2004, and the Domain Name was registered eight years later on 4 November 2012, by which time Facebook had already acquired a significant amount of goodwill and reputation worldwide. 5.1.18. Complainant s Facebook Trade Mark is highly distinctive and famous. 5.1.19. Respondent's use of the Domain Name deceives or confuses others in relation to the Facebook services. Facebook holds 150 country code Top Level Domains consisting of the term FACEBOOK, such as, for instance, <facebook.cn>, <facebook.com.kz>, <facebook.com.au>, <facebook.ca>, < facebook.ch> and <facebook.tw>. 5.1.20. Mongolian Facebook users can but think that the Domain Name is registered to Complainant and that the associated website is operated by it. Therefore, when accessing the website at the Domain Name, which is used as part of a money generating scheme, internet users can only be confused and deceived. Even though misdirected users may eventually become aware that they have reached a website operated by an entity other than Complainant, Respondent would still have appropriated Complainant's goodwill by diverting internet users to its advertising pages. 5.1.21. Respondent uses the Domain Name against Complainant's wishes. Respondent is not an authorized dealer, distributor, or licensee of Complainant, nor has it been otherwise allowed by Complainant to make any use of the Facebook Trade Mark. 5.1.22. In light of the above, Complainant submits that the Domain Name has been registered in violation of paragraph 1.1(2)(a)(ii) of the AUP. Paragraph 1.1(2)(b) sets out a non-exhaustive list of circumstances 4
demonstrating that a.mn domain name has been used in bad faith. Complainant relies on the following circumstances: 5.1.23. Respondent has intentionally created a likelihood of confusion and Complainant submits that Respondent's conduct falls within paragraph 1.1(2)(b)(ii) of the AUP. 5.1.24. Given the long and widespread reputation of Complainant s FACEBOOK mark, it is obvious that Respondent, by choosing to register and use a domain name which is identical to Complainant s widely known and distinctive trade mark, intended to ride on the goodwill of Complainant s Trade Mark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. 5.1.25. The offer for sale of the Domain Name and the advertising activity taking place via the Domain Name reinforce this blatant bad faith and imply that Respondent intended to obtain financial gain by misappropriating the benefit of the extensive world-wide reputation that Complainant has established. Such practice is detrimental to Complainant's reputation and interests. 5.1.26. Consequently, Respondent has, through the use of an identical domain name, created a likelihood of confusion with Complainant s Facebook Trade Mark and this constitutes a misrepresentation to the public that Respondent s website is in one way or the other associated or connected with Complainant. 5.1.27. The Domain Name was acquired for the purpose of selling it to Complainant. Complainant submits that Respondent's conduct falls within paragraph 1.1(2)(b)(iii) of the AUP. 5.1.28. In addition, when one accesses the website www.facebook.mn, these elements are strong indications that the Domain Name was acquired for the purpose of selling it to Complainant for an amount in excess of the outof pocket costs related to the registration of the Domain Name, in accordance with paragraph 1.1(2)(b)(iii) of the AUP. Whilst the practice of selling domain names in itself is not objectionable, it becomes so when the domain name in question is a famous trade mark, especially when the priority date of the trade mark in question pre-dates the registration date of the domain name by a number of years, as in the case at hand. 5.1.29. Blocking registration. Complainant also submits that Respondent's conduct falls within paragraph 1.1(2)(b)(iv) of the AUP. 5.1.30. It is submitted that Respondent has registered the Domain Name in order to prevent Facebook from reflecting its trade mark in the corresponding domain name. 5.1.31. Complainant submits that Respondent's conduct falls within paragraph 1.1(3) of the AUP, which allows conduct amounting to a pattern of registration is to be taken into account by an expert. 5
5.1.32. It is submitted that the factual background of this case has led Complainant to believe that Respondent is involved in numerous fraudulent schemes targeting brand owners. It is submitted that as part of such schemes, Respondent has registered many infringing domain names in bad faith. 5.1.33. In addition to the Domain Name, the following domain names infringing the Facebook Trade Mark were previously registered to Respondent: <dfacebook.co>, and <favebook.dk> were previously registered. Respondent has also registered at least 37 domain names that potentially infringe the rights of third parties, such as <agoogle.co.in> or <yaahoo.in>. 5.1.34. It is submitted that in light of the elements above demonstrating that Respondent is violating the provisions of the AUP, Complainant requests the transfer of the Domain Name. 5.2. Respondent 5.2.1. Whilst no official response was received from Respondent, the CoCCA Ombudsman advises he has received two email replies from Respondent claiming ownership and indicating the domain is for sale. 6. Discussion and findings 6.1 The Expert will assess the complaint on the basis of the Acceptable Use Policy, as set out below. Acceptable Use Policy The Acceptable Use Policy ("AUP") sets out the actions prohibited to users of the Datacom Network and includes the.mn registry, registrants of a.mn country code Top Level ( cctld ) Domain name (.mn Domain name ). The AUP defines Prohibited Use and contains a non-exhaustive list of restrictions pertaining to use of the Datacom Network and.mn Domain names in relation to various purposes and activities. They are as follows: COMPLIANCE WITH LAW AND POLICY 1.1 The Datacom Network and.mn Domain names must only be used for lawful purposes. The creation, transmission, distribution, storage of, or linking to any material in violation of applicable law or regulation is prohibited. This may include, but is not limited to, the following: (1) Communication, publication or distribution of material (including through links or framing) that infringes upon the intellectual and/or industrial property rights of another person. Intellectual and/or industrial property rights include, but are not limited to: copyrights (including future copyright), design rights, patents, patent applications, trade marks, rights of personality, and trade secret information. (2) Use of a.mn Domain name in circumstances in which: (a) (i) The.mn Domain name is identical or confusingly similar to a personal name, company, business or other legal or trading name as registered with the relevant Mongolia agency, or a trade or service mark in which a third party complainant has uncontested rights, including without limitation in circumstances in which: The use deceives or confuses others in relation to goods or services for which a trade mark is registered in Mongolia, or in respect of similar goods or closely 6
related services, against the wishes of the registered proprietor of the trade mark; or (ii) (iii) (iv) (b) (i) (ii) (iii) (iv) The use deceives or confuses others in relation to goods or services in respect of which an unregistered trade mark or service mark has become distinctive of the goods or services of a third party complainant, and in which the third party complainant has established a sufficient reputation in Mongolia, against the wishes of the third party complainant; or The use trades on or passes-off a.mn Domain name or a website or other content or services accessed through resolution of a.mn Domain as being the same as or endorsed, authorised, associated or affiliated with the established business, name or reputation of another; or The use constitutes intentionally misleading or deceptive conduct in breach of CoCCA recommendations, or the laws of Mongolia; or The.mn Domain name has been used in bad faith, including without limitation the following: The User has used the.mn Domain name primarily for the purpose of unlawfully disrupting the business or activities of another person; or By using the.mn Domain name, the User has intentionally created a likelihood of confusion with respect to the third party complainant s intellectual or industrial property rights and the source, sponsorship, affiliation, or endorsement of website(s), email, or other online locations or services or of a product or service available on or through resolution of a.mn Domain name; For the purpose of unlawfully selling, renting or otherwise transferring the Domain name to an entity or to a commercial competitor of an entity, for valuable consideration in excess of a User s documented out-of-pocket costs directly associated with acquiring the Domain Name; As a blocking registration against a name or mark in which a third party has superior intellectual or industrial property rights. (4) The.mn Domain name was registered arising out of a relationship between two parties, and it was mutually agreed, as evidenced by a writing, that the Registrant would be an entity other than that currently in the register. (5) Unlawful communication, publication or distribution of registered and unregistered know-how, confidential information and trade secrets. 6.2 Complainant submits that Respondent is violating the terms of paragraph 1 of the AUP, in particular 1.1(2)(a)(ii), 1.1(2)(b)(ii),(iii) and (iv), as well as 1.1(3). 6.3 The Expert will now deal with the principal grounds relied upon by Complainant. 7. Identical or Confusingly Similar 7.1.1 Complainant contends that the Domain Name is identical or confusingly similar to a trade or service mark in which Complainant has uncontested rights (1.1(2)(a)). 7.2 Complainant has for many years used and sought protection for the Facebook name and trade mark (hereinafter the Facebook Trade Mark ). There can be no doubt that the Facebook Trade Mark is very well known in 7
relation to social media and is one of the world s best-known trade marks 7.3 Complainant contends that the Facebook Trade Mark effectively enjoys a worldwide reputation and has been protected by Complainant both at common law and through registration. 7.4 The Expert accepts that the Facebook Trade Mark is exclusively associated with Complainant. It is apparent that by virtue of its widespread and long-standing use and the repute of the Facebook Trade Mark that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived. 7.5 The Domain Name is identical to and therefore confusingly similar to the Facebook Trade Mark and incorporates Complainant s Facebook Trade Mark in its entirety. 7.6 In this particular case, Complainant asserts that the Domain Name is being used to point to a dynamic page, and that the Domain Name changes every time it is entered into a web browser resulting in a notice "Redirecting to Advertiser" is displayed before the various redirections. This, Complainant submits, indicates that Respondent earns a certain sum of money each time an internet user accesses the advertised page via www.facebook.mn. This in turn suggests that Respondent is operating a pay per click scheme to attract revenue. Further, Respondent has not explained his position and denied that this is or might be occurring. 7.7 In this particular case the Expert finds: 7.7.1 Complainant has rights in respect of the Facebook Trade Mark. 7.7.2 The Domain Name is identical to the Facebook Trade Mark or alternatively is at least confusingly similar thereto 8. Likelihood of Confusion or deception 8.1 As noted above, Respondent s central argument is that Respondent has, through the registration and use of an identical domain name, created a likelihood of confusion with Complainant s Trade Mark and this constitutes a misrepresentation to the public that Respondent s website is in one way or the other associated or connected with Complainant. In this regard Complainant relies principally on paragraph 1.1(2)(b)(ii) of the AUP. 8.2 Respondent has been given the opportunity to file a response to explain its position as to why he used the Facebook Trade Mark as an integral part of the Domain Name. He has failed to avail himself of that opportunity. Accordingly, the Expert is required to deal with the information, evidence and submissions on record. 8.3 In the circumstances, it is difficult to see how Respondent s conduct could be characterized as permissible. That is not to say that the purchase of domain names is by itself evidence of bad faith intent or bad faith use and 8
that the purchase by a non-trade mark holder of a domain name that includes a matching trade mark is necessarily prohibited under the AUP. Each case turns on its facts. However, in the case of a well-known internationally recognised trade mark (the Facebook Trade Mark being one) it may well be incumbent on a respondent to explain its actions. If, for whatever reason, it chooses to remain silent it must live with the consequences. 8.4 On this basis the Expert is satisfied that there is a likelihood of confusion with Complainant s Trade Mark and this constitutes a misrepresentation to the public that Respondent s website is somehow associated or connected with Complainant. 9. Acquisition or Use in Bad Faith 9.1 Next, Complainant asserts that Respondent has acquired or used the Domain Name for the purpose of unlawfully selling, renting or otherwise transferring the Domain Name for valuable consideration in excess of a User s documented out-of-pocket costs directly associated with acquiring the Domain Name and further or alternatively is being used as a blocking registration against a name or mark in which a third party has superior intellectual or industrial property rights. That is, pursuant to paragraph 1.1(2)(b)(iii) and (iv) of the AUP. 9.2 Further, it is alleged that Respondent has engaged in a pattern of abuse of domain name registration in breach of paragraph 1.1(3) of the AUP. It is asserted that between 9 and 10 July 2014, Complainant's lawyers received three emails from a person named Rose offering to sell the Domain Name. 9.3 Having reached the view that Respondent lacks any apparent justification the Expert observes that there is equally no apparent basis to infer the existence of a license or permission to use such a well-known trade mark and that Respondent has not demonstrated use of the Domain Name in connection with a bona fide offering of goods or services. On that basis, it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase or partake in Complainant s well-known branded social media platform and services. 9.4 In particular, as noted above, Complainant asserts that it received offers to sell the Domain Name. 9.5 In the absence of any explanation from Respondent as to how and why Complainant s Trade Mark is necessary for the alleged legitimate operation of his business the Expert finds that he has acquired or used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know and trust Complainant s Trade Mark. 9.5.1 The unrefuted allegations of attempts to sell the Domain Name to Complainant for an amount in excess of its nominal value reinforce the view that the Domain Name was acquired or used in bad faith. 9
9.5.1.1 Further, Complainant alleges that Respondent has registered at least 37 domain names that potentially infringe the rights of third parties. Once again, this allows the Expert to draw the inference that Respondent has shown a pattern of bad faith domain name registrations. 9.6 Finally, the Expert is satisfied that bad faith acquisition or use is supported by the fact that Complainant s Trade Mark significantly pre-dated Respondent s registration of the Domain Name. In light of the longestablished and widespread use and the protection of Complainant s Trade Mark it is found that Respondent knew or ought to have known of Complainant s prior rights. 10. Decision 10.1 For the foregoing reasons, the Expert finds that Respondent has violated the terms of paragraphs 1.1(2)(a)(ii), 1.1(2)(b)(ii),(iii) and (iv); and 1.1(3) of the AUP and orders that the Domain Name, <Facebook.mn>, be transferred to Complainant. Place of decision Auckland, New Zealand Date July 15, 2015 Expert Name Mr Clive Elliott QC Signature 10