Facebook, Inc. v. Daniel Kastner / Kastner - No Squares
Claim Number: FA1206001450503
Complainant is Facebook, Inc. (“Complainant”), represented by Aaron M. Fennimore of Cooley LLP, California, USA. Respondent is Daniel Kastner / Kastner - No Squares (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <facebookconnect.com>, registered with 1 & 1 INTERNET AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 27, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <facebookconnect.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@facebookconnect.com. Also on June 28, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the world’s leading provider of online networking services with over 901 million active users worldwide. Complainant owns a trademark registration for its FACEBOOK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,041,791 registered January 10, 2006).
Complainant uses the FACEBOOK mark to identify Complainant’s award-winning, proprietary, and unique social networking services, platform services, and associated products and services.
Respondent’s disputed domain name, <facebookconnect.com>, is nearly identical and/or confusingly similar to Complainant’s FACEBOOK mark.
The disputed domain name resolves to a holding page maintained by Respondent.
Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith due to constructive knowledge and opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trade trademark rights in the FACEBOOK mark. Complainant acquired such rights prior to Respondent’s registration of the at‑issue domain name.
Respondent is not affiliated with Complainant and had not been authorized to use the FACEBOOK mark in any capacity.
Respondent had actual knowledge of Complainant and its rights in the FACEBOOK mark prior to registering the at‑issue domain name.
The at-issue domain name references a holding page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
1. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant registered its FACEBOOK mark in numerous countries and with numerous trademark agencies including the USPTO (Reg. No. 3,041,791 registered January 10, 2006). Complainant’s registration of FACEBOOK with one or more recognized trademark registries demonstrates that Complainant holds rights in the FACEBOOK mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s domain name, <facebookconnect.com>, is confusingly similar to Complainant’s FACEBOOK mark. The at‑issue domain name incorporates Complainant’s mark in its entirety, adds the generic word “connect,” and appends the generic top-level domain, “.com.” These alterations do not differentiate the domain name from Complainant’s mark for the purposes of Policy ¶4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Moreover, the fact that the at‑issue domain name contains Complainant’s entire mark also shows the domain name is confusing similar to Complainant’s mark. See PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding <pepsiadventure.net>, <pepsitennis.com>, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Respondent lacks rights and legitimate interests in respect of the <facebookconnect.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
In addition, the at‑issue domain name references a page that lacks substantive content. The webpage states: “THIS DOMAIN NAME HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS!” The page contains information about webhosting. Under these circumstances Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <facebookconnect.com> domain name pursuant to Policy ¶ 4(c)(iii). This finding further suggests that Respondent lacks rights or legitimate interests in the at‑issue domain name. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where “Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names” and “no commercial use is being made of the names”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Even though this particular circumstance is not enumerated under Policy ¶(b), Respondent’s registration of a confusingly similar domain name and subsequent failure to make an active use of such domain name indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original);see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Perhaps more significantly, Complainant’s trademark registration(s) for FACEBOOK existed well before Respondent registered the at‑issue domain name. Given the fame of Complainant's mark and Respondent’s use of the suggestive term “connect” along with the mark to form the at‑issue domain name, it is apparent that Respondent had actual knowledge of Complainant and Complainant’s FACEBOOK mark, at the time it registered <facebookconnect.com>. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)"; see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith…)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 28, 2012
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