The Complainants are Facebook, Inc. and Instagram, LLC, both of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Adam Szulewski of Augustów, Poland. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with OVH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 24, 2016, 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.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Polish is the language of the registration agreement, on November 30, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On the same date, the Complainants confirmed their request for English to be the language of the proceeding. The Respondent did not reply to the Center’s email or the Complainants’ request.
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 proceeding commenced on December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. On December 27, 2016, the Respondent sent an email to the Center in which he offered to cancel the disputed domain names. On the same date, the Center acknowledged the Respondent’s email and invited the Complainants to request a suspension of the proceeding to explore settlement options. On the same date, the Complainants indicated that they did not want to suspend the proceeding. The Respondent did not submit a formal Response to the Complaint. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on December 29, 2016.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 10, 2017. 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 Complainants have submitted evidence that Instagram, LLC is a wholly-owned subsidiary of Facebook, Inc., and have argued that they have a specific common grievance, that they have a common legal interest to defend the trademark rights on which the complaint is based, that they are the target of common conduct by the Respondent, which has affected their legal interests in a similar fashion, and that it would be equitable and procedurally efficient to permit the consolidation of the proceeding despite the fact that they are two different complainants. The Complainants have further contended that so deciding would be as efficient and cost effective a manner as is fairly possible to combat cybersquatting and that this would be consistent with paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereafter, “WIPO Overview 2.0”). 4. Factual Background
The Complainant Facebook, Inc. is the registered owner of many trademark registrations consisting of or containing the terms “facebook” or “fb”, including United States Trademark Registration No. 3041791 for FACEBOOK (word), registered on January 10, 2006, and figurative International Trademark Registration No. 1075094, including the element “facebook”, registered on July 16, 2010; European Union Trademark Registration No. 005585518, for FACEBOOK, registered on May 25, 2011; United States Trademark Registration No. 4659777, for FB, registered on December 23, 2014; and European Union Trademark Registration No. 008981383, for FB, registered on August 23, 2011.
The Complainant Facebook, Inc. is the owner of numerous domain names consisting of or including the term “facebook”, such as (created in March 1997), reported to be the third most visited website in the world.
The Complainant Instagram, LLC is the registered owner of many trademark registrations consisting of or containing the term “instagram”, including United States Trademark Registration No. 4146057 for INSTAGRAM, registered on May 22, 2012 (first used in commerce on October 6, 2010); and European Union Trademark Registration No. 1129314, for INSTAGRAM, registered on March 15, 2012.
The Complainant Instagram, LLC also owns rights inter alia in the domain name , reported to be the 16th most visited website in the world.
The FACEBOOK, FB and INSTAGRAM trademarks are hereafter together referred to as the “Marks”.
The Complainants carry on their business globally, including in Poland, where the Respondent appears to be located.
Founded in 2004, the Complainant Facebook, Inc., also commonly known as “FB” (NASDAQ identifier: FB), is the world’s leading provider of online social networking services. The Complainant Facebook, Inc. allows Internet users to stay connected with friends and family, and to share information mainly via its website, which has 1.13 billion daily active users on average.
Launched on October 6, 2010, and acquired by the Complainant Facebook, Inc. in April 2012, the Complainant Instagram, LLC is the world’s leading online photo and video sharing social networking application, with an average of 95 million photos and videos uploaded daily. It is the fastest growing social media in the world.
The 101 disputed domain names were created between May 4, 2016 and November 4, 2016 and all resolve to the same website “”, which offers for sale “likes” and “followers”. 5. Parties’ Contentions A. Complainants
(i) The Complainants submit that the disputed domain names reproduce the Marks, in which the Complainants have rights, and are confusingly similar to the Marks insofar as the disputed domain names contain the distinctive elements “facebook”, “fb” or “Instagram”, as the case may be, in their entirety. The Complainants also assert that the addition of the generic or geographical terms “buy”, “cheap”, “likes”, “followers”, “fans”, “usa”, “uk”, “fast” do not serve to distinguish the disputed domain names from the Marks and only add to the confusion.
(ii) The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Furthermore, the Complainants contend that they never authorized the Respondent to use the Marks in any manner. The Complainants also assert that the Respondent does not appear to be known by the disputed domain names and never had any business relationship with the Complainants.
(iii) The Complainants submit that the Respondent has registered and is using the disputed domain names in bad faith. The Complainants allege that the Marks being famous worldwide, including in Poland where the Respondent resides, the Respondent had full knowledge of the Marks when registering the disputed domain names.
(iv) The Complainants submit that by misleadingly diverted consumers, most likely for his own commercial gain, the Respondent is using the disputed domain names in bad faith.
(v) The Complainants request that the 51 disputed domain names incorporating the FACEBOOK or FB Marks be transferred to the Complainant Facebook, Inc., and that the remaining 50 disputed domain names incorporating the INSTAGRAM Mark be transferred to the Complainant Instagram, LLC. B. Respondent
The Respondent did not reply to the Complainants’ contentions.
The Respondent merely replied to the Center with an email in English dated December 27, 2016, in which he offered to cancel the disputed domain names. 6. Discussion and Findings 6.1. Procedural Aspects A. Consolidation of the Proceedings
Having regard to the Complainants’ motivated request and noting that all of the 101 disputed domain names are registered in the name of the Respondent and point to the same website, the Panel, in the absence of any reply from the Respondent, determines that it is appropriate and fair under the circumstances of this case to allow the consolidation of the proceedings brought by two complainants in a single complaint against a single respondent (as per paragraph 3(c) of the Rules). B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain names is Polish.
The Complainants in their Complaint formally requested that the language of the proceeding be English, to which the Respondent failed to comment on or object despite the Center’s invitation to do so, expressed in Polish as well as in English, such invitation having been sent to the Respondent on November 30, 2016.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion in the spirit of fairness to both parties, which pursuant to paragraph 10(b) of the Rules have to be treated with equality, 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 notes that all disputed domain names point to a website in the English language and that the Respondent’s email communication of December 27, 2016 is in the English language, from which it can be inferred that the English language is understood by the Respondent.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and Polish, determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English. C. Failure to Respond
As aforementioned, no formal Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainants’ burden to establish that all three of the required criteria for a transfer of the disputed domain names have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainants. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain names, such as making legitimate noncommercial or fair use of the disputed domain names.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent has acted in bad faith. D. Respondent’s Apparent Consent to Cancel
The Respondent has apparently consented to cancel the disputed domain names in his email communication of December 27, 2016. The Panel is unable on that basis alone to order the transfer of the disputed domain names, and determines to proceed to a substantive determination of the merits. See WIPO Overview 2.0, paragraph 4.13. 6.2. Requirements of Paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the Marks with the disputed domain names, it is evident that the latter consist solely of the Marks, preceded or followed by generic or geographical terms such as “buy”, “cheap”, “likes”, “followers”, “fans”, “usa”, “uk”, “fast” and variations thereof, followed by the generic Top-Level Domain (“gTLD”) “.top”.
The addition of generic terms does not typically serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank,WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
Such terms, particularly “likes” and “followers”, are strongly related to the Complainants’ activities and the Panel is of the view that these terms are likely to reinforce the confusing similarity with the Marks and corroborate the impression that the disputed domain names belong to, or are affiliated with the Complainants.
It is also well established that any gTLD, including, as is the case here, the gTLD “.top”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain names are confusingly similar to the Marks, which they individually incorporate entirely.
Thus, the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainants have made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names or uses the disputed domain names in a business.
The website associated with the disputed domain names offers for sale “likes” or “followers”, contrary to the Complainants’ terms of service.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain names.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainants have argued that the Respondent (i) has no business relationship with the Complainants, (ii) received no authorization from the Complainants to register or use the disputed domain names, and (iii) is not known by the disputed domain names.
In the circumstances, the Panel concludes that the Complainants have established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain names. C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainants by registering the disputed domain names confusingly similar to the Marks.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775.
In this case, given that the Marks are famous, as was recognized in a number of previous UDRP cases (see Facebook, Inc. v. He Wenming,WIPO Case No. DCC2013-0004; Facebook, Inc. v. Jung Hyun Shin, Master, Inc., Sang Hoon Lee and Seung Hee Lee, WIPO Case No. D2013-2030; Facebook, Inc. v. Cetinje s.r.o.,WIPO Case No. D2014-1070; Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547; Facebook, Inc. v. Xiamen eName Network Co., Ltd. / Shawn, Wang,WIPO Case No. D2015-1339; Facebook, Inc. v. Emma Boiton,WIPO Case No. D2016-0623; Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd / weiwei,WIPO Case No. D2016-0609; and Instagram, LLC v. Zhou Murong,WIPO Case No. D2014-1550), the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain names randomly with no knowledge of the Marks. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The fact that the Respondent registered so many domain names confusingly similar to the Marks over a relatively short period of time confirms the implausibility of a random registration of the disputed domain names and by contrast reveals a pattern of conduct in the meaning of paragraphs 4(b)(ii) and (iii) of the UDRP to prevent the Complainants from reflecting the Marks in corresponding domain names, such conduct being strongly indicative of bad faith. See WIPO Overview 2.0, paragraph 3.3.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf,WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, given the worldwide renown of the Marks, the Panel cannot find any any actual or contemplated good faith use of the disputed domain names, as they invariably result in misleading diversion and taking unfair advantage of the Complainants’ rights. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In this case, the disputed domain names resolve to the website “” which offers for sale “likes” and “followers” which indicates that the Respondent is targeting the Complainants and is using for commercial gain the disputed domain names in bad faith.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain names constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant Facebook, Inc.
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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant Instagram, LLC.
Louis-Bernard Buchman
Sole Panelist
Date: January 24, 2017
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