The Complainants are Facebook, Inc., Instagram, LLC and Oculus VR, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is PrivacyG of Phoenix, Arizona, United States / Shi Lei of Hangzhou, China. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with NameSilo, LLC; the disputed domain names , , , , , , , , , , and are registered with HiChina Zhicheng Technology Ltd; the disputed domain names , , , , , , , and are registered with Alibaba Cloud Computing Ltd d/b/a HiChina (collectively the “Registrars”). 3. Procedural History
The Complaint was filed regarding the disputed domain name in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 15, 2018, the Center transmitted by email to the Registrar NameSilo, LLC a request for registrar verification in connection with the disputed domain name . On the same day, the Registrar NameSilo, LLC 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 June 20, 2018 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 in English on June 28, 2018, in which it added 21 disputed domain names. On June 29 and July 11, 2018, the Center transmitted by email to the Registrars Alibaba Cloud Computing Ltd d/b/a HiChina , HiChina Zhicheng Technology Ltd and NameSilo, LLC requests for registrar verification in connection with the added disputed domain names. On July 3 and 11, 2018, the Registrars transmitted by email to the Center their verification responses, confirming that the Respondent is listed as the registrant and providing the contact details.
On July 10, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on July 19, 2018.
The Center verified that the Complaint together with the amended Complaints 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 July 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 26, 2018. 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. 4. Factual Background A. Complainants
The First Complainant, Facebook, Inc., is a company incorporated in the United States, and the world’s leading provider of online social networking services. The First Complainant has been using the trade mark FACEBOOK since its launch in 2004 in respect of the First Complainant’s social networking services. The First Complainant is the owner of numerous registrations for the FACEBOOK Trade Mark in jurisdictions worldwide, including international registration No. 1075094, registered on July 16, 2010; and Chinese registration No. 5251162, registered on September 21, 2009.
The Second Complainant, Instagram, LLC, is a wholly owned subsidiary of the First Complainant, incorporated in the United States. The Second Complainant has been using the trade mark INSTAGRAM since its launch in 2010 in respect of the Second Complainant’s online photo and video sharing social networking application. The Second Complainant is the owner of numerous registrations for the INSTAGRAM Trade Mark in jurisdictions worldwide, including international registration No. 1129314, registered on March 15, 2012; and Chinese registration No. 10614690, registered on June 14, 2013.
The Third Complainant, Oculus VR, LLC, is a wholly owned subsidiary of the First Complainant, incorporated in the United States. The Third Complainant has been using the trade mark OCULUS since its launch in 2012 in respect of the Third Complainant’s virtual reality software and apparatus, including headsets and helmets. The Third Complainant is the owner of numerous registrations for the OCULUS Trade Mark in jurisdictions worldwide, including international registration No. 1210634, registered on June 12, 2014; and Chinese registration No. 15098478, registered on July 12, 2015. B. Respondent
The Respondent is apparently an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on December 7, 2017.
The disputed domain names , , , and were registered on November 11, 2017.
The disputed domain name , , and were registered on July 23, 2017.
The disputed domain name was registered on July 22, 2017.
The disputed domain name was registered on November 29, 2016.
The disputed domain names , , , , , , , , , and were registered on October 23, 2017. D. The Respondent’s Use of the Disputed Domain Names
The disputed domain names , , , , , , , , , and have been resolved to English language websites with sponsored links targeting the Complainants’ FACEBOOK, INSTAGRAM and OCULUS Trade Marks (the “Trade Marks”).
The disputed domain names , and have been resolved to English language websites with sponsored links comprising generic terms and phrases which do not overtly target the Trade Marks.
The disputed domain names , , , , , , and have not been used. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Consolidation of Complainants
Paragraph 10(e) of the Rules provides as follows:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
Past UDRP decisions suggest that a complaint may be brought by multiple complainants where (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
The Complainants have requested consolidation, for the following reasons:
(i) Given that the Second and Third Complainants are the First Complainant’s wholly owned subsidiaries, the Complainants have a sufficient common legal interest in the Trade Marks reproduced in the disputed domain names in order to file a joint Complaint;
(ii) The Complainants are the targets of common conduct by the Respondent, consisting of a pattern of reproducing their respective Trade Marks in the disputed domain names, which clearly affects their individual rights and interests in a similar fashion;
(iii) It would be equitable and procedurally efficient to permit consolidation of the Complainants, for the following reasons:
(a) There is no apparent reason why it would not be equitable to permit consolidation;
(b) The substantive arguments made under each of the three elements of the Policy are common to all the disputed domain names;
(c) The Complainants are represented by a single authorised representative for the purpose of the proceeding;
(d) The Complaint clearly stipulates each disputed domain name, the individual Complainant making a claim thereto, the right or rights relied upon by that Complainant, the remedy sought in respect of each disputed domain name, and the Registrar with whom each disputed domain name is registered; and
(e) The relevant filings, including any annexes, are not unreasonably voluminous; and
(iv) Allowing the Complainants to bring a single Complaint against the Respondent would be appropriate, balanced and consistent with the aim of the Policy to combat cybersquatting in as efficient and cost effective a manner as possible.
The Panel finds that the Complainants have common grievances against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants’ rights in a similar fashion. In addition to the Complainants’ submissions, the common conduct of the Respondent includes the use of a large number of the disputed domain names in respect of similar English language websites with sponsored links (most of which target the Trade Marks); with the remainder of the disputed domain names being passively held (see Section 4.D. above).
The Panel also finds that it would be procedurally efficient and equitable to all the Parties for the Complainants to be consolidated.
In all the circumstances, the Panel therefore determines, under paragraph 10(e) of the Rules, that there be consolidation of the disputed domain names and the Complainants in this proceeding. 6.2 Language of the Proceeding
The language of the Registration Agreements for the disputed domain names , , and is English. The language of the Registration Agreements for the remainder of the disputed domain names 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 Complainants have requested that the language of the proceeding be English for the following reasons:
(i) The language of the Registration Agreements for the disputed domain names , , and is English;
(ii) The disputed domain names have been registered under the .com and .xyz extensions;
(iii) The disputed domain names identically reproduce or consist of a misspelling of the Trade Marks, which are highly distinctive terms in English;
(iv) The disputed domain names , , , , , , , , , , and , , , , , and include the English words “direct”, “from”, “local”, “fee”, “free”, “for” and “business” and therefore the Respondent is targeting English speakers. Thus the Respondent is likely to have a good understanding of the English language;
(v) It would be disproportionate to require the Complainants to submit a Chinese translation of the Complaint as this would result in additional expense and unnecessary delay.
The Respondent, having received notice of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding and did not file a response.
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 considers there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel notes that, in particular, the language of the Registration Agreements for three of the disputed domain names is English; and, in addition to the Complainants’ submissions highlighted above, the Websites and the sponsored links therein are in English. 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.
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. 6.3 Substantive Elements of the Policy
The Complainants 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 Complainants have rights in the Trade Marks acquired through use and registration.
The disputed domain names each incorporate the entirety of one of the Trade Marks (see WIPO Overview 3.0, section 1.7) or alternatively a common, obvious, or intentional misspelling of one of the Trade Marks (see WIPO Overview 3.0, section 1.9) together with the words or abbreviations/acronyms “direct”, “from”, “local”, “fee”, “free”, “for”, “business”, “www” or “liat”, or common, obvious, or intentional misspellings thereof.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks. 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 a 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 organization) 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.
The Complainants have not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. 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 the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used a large number of the disputed domain names in respect of websites with sponsored links, most of which target the Trade Marks. The remainder of the disputed domain names has not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainants’ prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Panel concludes that bad faith registration and use has been made out for the following reasons:
(i) Given the repute of the Trade Marks, it is inconceivable that the Respondent did not have knowledge of the Complainants and of the Trade Marks at the time of registration of the disputed domain names;
(ii) The evidence demonstrates that the Respondent sought to take advantage of the Trade Marks when registering the disputed domain names;
(iii) Many of the disputed domain names have been used to gain revenue by way of sponsored links, most of which target the Trade Marks. This amounts to bad faith under paragraph 4(b)(iv) of the Policy;
(iv) The Respondent has used privacy protection services for some of the disputed domain names, to conceal the Respondent’s identity;
(v) The disputed domain name was registered on December 7, 2017, the very same day that the test of Instagram Direct as a standalone application was announced by the Complainant Instagram, LLC. The timing of the registration clearly indicates that the Respondent was intending to capitalise on the announcement of the Instagram Direct standalone application and the perceived increased commercial value of the disputed domain name (see WIPO Overview 3.0, section 3.1.1); and
(vi) Given the repute of the Trade Marks, and the evidence of bad faith use of many of the disputed domain names, there can be no conceivable good faith use of the disputed domain names that have been passively held by the Respondent. 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 Complainants.
Sebastian M.W. Hughes
Sole Panelist
Dated: September 10, 2018
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