Complainants are Facebook, Inc., and Instagram, LLC, both of Menlo Park, California, United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Rafael Cuellar of Long Beach, California, United States. 2. The Domain Names and Registrar
The disputed domain names (collectively, “the Domain Names”) , , , , , , , , , , , , , , , , , , , , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 26, 2018, 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 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2018. On December 2, 2018, December 4, 2018, and December 6, 2018, the Center received email communications from Respondent.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 6, 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
Facebook, Inc., (“Facebook”) is the world’s leading provider of online social networking services. It has approximately 2.23 billion monthly active users and 1.47 billion daily active users on average worldwide. Its main website “” is currently ranked as the 3rd most visited website in the world and in the United States, according to information company Alexa. Facebook is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market. In September 2017, the FACEBOOK brand ranked 8 (up from 15 in 2016 and 23 in 2015) in Interbrand’s Best Global Brands report and has been selected one of the world’s five “Top Growing Brands”, with a 48 percent growth.
Instagram, is a world-renowned leading online photo and video sharing social networking application. Facebook acquired Instagram in April 2012. Currently, Instagram has 1 billion monthly active users and 400 million daily active users, with more than 95 million photos and videos shared per day. It is one of the fastest growing social media in the world and has consistently ranked amongst the top “apps” for mobile devices. Instagram is the 5th most downloaded app in the United States for iPhones, according to applications information company App Annie. Furthermore, Instagram’s website available at “” is ranked the 14th most visited website in the world, according to information company Alexa.
In addition to their strong online presence, Complainants own numerous trademark registrations for the FACEBOOK Mark and the INSTAGRAM Mark (together, “the Marks”) around the world. For the FACEBOOK Mark, for example, Complainants own: U.S. Trademark Registration Nos. 3,041,791 (registered January 10, 2006); 3,122,052 (registered July 25, 2006); and 4,146,057 (registered May 22, 2012). For the INSTAGRAM Mark, for example, Complainants own U.S. Trademark Registration No. 4,170,675 (registered July 10, 2012).
At the time of filing, all of the Domain Names apart from one, , point to websites displaying the words “coming soon” or to inactive websites. The Domain Name resolves to a social network website with a drawing of animals and people in the background, the words “FacebookForAnimal”, and phrases such as “Connect with people”, “Make new friends”, “Create new relationships” or “Discover new places” and small photos representing users. The website to which the Domain Name is pointing also allows people to access user profiles by clicking on the photos displayed on the main website. Although the total number of users of this network is not known, many of them are named “Cuellar” which corresponds to the name in the WhoIs records of the Domain Names. One of the profiles belongs to Respondent, Rafael Cuellar.
On April 26, 2018, Complainants’ lawyers sent a cease and desist letter to Respondent by email asserting Complainants’ trademark rights and asking Respondent to transfer the Domain Names to Complainants. Respondent did not reply.
Respondent registered the Domain Names between May 18, 2017 and March 29, 2018. More specifically, the following Domain Names related to the FACEBOOK Mark were registered as follows: on November 21, 2017 – , , ; on November 19, 2017 – and ; on March 29, 2018: , , , and ; and on March 27, 2019 – , , , and .
The following Domain Names related to the INSTAGRAM Mark were registered as follows: on May 18, 2017 (); on May 19, 2017 (, , ); on November 21, 2017 (); on March 29, 2018 (); on May 20, 2017 (, ); and on March 27, 2018 , , , and . 5. Parties’ Contentions A. Complainants
The terms FACEBOOK and INSTAGRAM are highly distinctive and are exclusively associated with Complainants. The Domain Names are confusingly similar to the Marks. The Domain Names identically reproduce Complainants’ FACEBOOK and INSTAGRAM Marks in their entirety, with the addition of the generic terms “animal”, “animals”, “for”, “a”, “mascots”, “ride”, “car”, “cars”, or the letter “s” under the “.com”, “.info”, “.net” and “.org” generic Top-Level Domains (“gTLDs”) and under the “.co” Top-Level Domain (“ccTLD”) for Colombia. The Domain Names differ from the Marks by the addition of generic terms and of the letter “s”. Such additions are insufficient to distinguish the Domain Names from the Marks. Because of the well-known character of the FACEBOOK and INSTAGRAM Marks, it is submitted that, when confronted with a combination of the suffixes “animal”, “animals”, “for”, “a”, “mascots”, “ride”, “car”, “cars”, or the letter “s”, many Internet users would be confused and assume that the Domain Names are in some way connected with Complainants. It is generally accepted that the suffix, such as “.com”, “.info”, “.net”, “.org” and “.co”, is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
Respondent has no rights or legitimate interests in the Domain Names. He is not a licensee of Complainants, nor has he been otherwise allowed by Complainants to make any use of the Marks. At the time of filing, all the Domain Names apart from one, , point to web pages displaying the words “coming soon” with no other content or to inactive web pages. Therefore, except for that Domain Name, Respondent is passively holding all of the Domain Names. The Domain Name resolves to a social network website offering services similar to those of Complainants. Furthermore, Respondent’s registration of a large number of Domain Names reproducing Complainants’ trademarks and currently pointing to websites displaying very limited activity, also strongly suggests that his intentions for the remaining Domain Names contained in this complaint are not well-meaning. Respondent cannot conceivably assert that he is commonly known by the Marks given Complainants’ notoriety and the fact that the FACEBOOK Mark and INSTAGRAM Mark are inherently distinctive trademarks that are exclusively associated with Complainants. Furthermore, a search performed by Complainants has revealed that Respondent has not secured or even sought to secure any valid trademark rights in the terms FACEBOOK and INSTAGRAM. Finally, given the overwhelming renown and explosive popularity of Complainants’ trademarks worldwide, and the nature of the Domain Names themselves, it is simply not possible to conceive of any plausible actual or contemplated active use of the Domain Names that would not be illegitimate, as they would invariably result in misleading diversion and taking unfair advantage of Complainants’ rights.
The Marks are highly distinctive and well known throughout the world, including in the U.S. where Respondent resides, and they have been continuously and extensively used for many years, having rapidly acquired considerable goodwill. In this regard, it should be noted that the FACEBOOK Mark has been in use since 2004, and the INSTAGRAM Mark, since 2010. It would be inconceivable for Respondent to argue that it did not have knowledge of the Marks at the time he registered the Domain Names in 2017 and 2018. At that time, Facebook had already acquired more than 1.9 billion monthly users worldwide and Instagram 300 million users. Respondent’s subsequent use of the Domain Name to resolve to a website offering a social network platform leaves no doubt that Respondent was aware of Facebook. Complainants therefore submit that Respondent registered the Domain Names in full knowledge of Complainants’ rights.
Respondent is fully aware that Internet users would expect to find a website that is affiliated to or sponsored by Complainants at a domain name identically reproducing the Marks in conjunction with descriptive terms. The confusion caused by the Domain Name itself is compounded by the content of the website to which it resolves. Respondent’s use of the Domain Name to resolve to a social network platform further adds to the confusion and is likely to mislead the average Internet user into thinking not only that they have reached one of Complainants’ official websites but also that the services available on Respondent’s websites have been developed or authorized by Complainants when in fact that is not the case. That there are no clear and prominent disclaimers at the website to which the Domain Name is pointing indicating that Respondent’s website (or services) is not affiliated to or sponsored by Complainants further adds to the confusion and constitutes additional evidence of bad faith use on Respondent’s part, although even if such a disclaimer was displayed, this would not remove the confusion.
Furthermore, Respondent’s passive holding of most of the Domain Names is, taking into account the overall circumstances of this case, strong evidence of bad faith. Indeed, given the fame of the Marks there simply cannot be any actual or contemplated good faith use of the Domain Names by any third party other than Complainants, as such use would result in misleading diversion and taking unfair advantage of Complainants’ rights (to the detriment of Complainants). Finally, Respondent’s failure to respond to Complainants’ cease and desist letter is an additional strong indication of Respondent’s bad faith.
That Respondent has deliberately chosen to conceal his identity by means of a privacy protection service in relation to is another strong indication of Respondent’s bad faith and his intent to use the Domain Names in a way which may be abusive or otherwise detrimental to Complainants and its rights. Indeed, given the overall circumstances of this case (in particular, Complainants’ strong reputation worldwide and the fact that the website to which the Domain Name resolves offers products and services competing with those offered by Complainants), there is no reason that could explain why Respondent would need to protect his identity by means of a privacy shield “except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting”. B. Respondent
Respondent failed to submit a timely formal response addressing the arguments and facts Complainants raised in their cease and desist letter to him. Two of the three communications that Respondent addressed to the Center constituted sporadic thoughts which did not inure to Respondent’s benefit. The third email was not even directed to the Center, rather it was addressed to the Registrar. Respondent has been on notice about the issues involved in this proceeding since Complainants sent their cease and desist letter to him and Respondent failed to provide any excuse for filing any form of response late. Thus, the Panel has not considered Respondent’s belated communications. 6. Discussion and Findings A. Consolidation of the Proceedings
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the same domain name holder registers the domain names. Paragraph 4(f) of the Policy provides that where there are multiple disputes between a complainant and respondent, either party may petition to consolidate the disputes before a single administrative panel. Under paragraph 10(e) of the Rules it is for the panel to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and Rules. Facebook, Inc. (“Facebook”) and Instagram have jointly filed a Complaint and request consolidation of the outstanding domain name disputes for the Domain Names registered by Respondent.
To file a single complaint by multiple complainants or against multiple respondents, the complaint must meet the following criteria: (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.
The Panel finds that Complainants satisfy the first part (i) of the two-part test. That is, because Instagram is the wholly owned subsidiary of Facebook, Complainants have a sufficient common legal interest in the trademarks included in the Domain Names to file a joint Complaint. See, e.g., eBay Inc., PayPal, Inc. v. Rene Rene/Wuxi Yilian LLC,WIPO Case No. D2015-0010 (“The Complainants in this case are clearly related. The second Complainant is wholly owned by the first Complainant...Accordingly, the Panel has allowed the Complaint to proceed in the name of both Complainants”); see also, Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd / weiwei,WIPO Case No. D2016-0409 (“The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. The Second Complainant is a subsidiary of the First Complainant and they have common interests.”). Furthermore, the Panel finds that Complainants are the target of common conduct by Respondent, consisting of a pattern of reproducing their respective trademarks in Domain Names, clearly affecting their individual rights and interests in a similar fashion.
Regarding the second part of the test, Complainants submit that it would be equitable and procedurally efficient to permit consolidation of the Complaints, because: (i) the substantive arguments made under each of the three elements of the Policy are common to all the Domain Names; (ii) Complainants are represented by a single authorized representative for the purpose of the proceedings; (iii) the Complaint clearly stipulates each 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 Domain Name, and the registrar with whom each Domain Name is registered; and (iv) the relevant filings, including any annexes, are not unreasonably voluminous. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331. For the aforementioned reasons the Panel agrees that permitting this single Complaint to proceed against Respondent would be equitable and procedurally efficient.
For the aforementioned reasons, Complainants’ consolidation request is granted. B. Identical or Confusingly Similar
Complainants have rights in the FACEBOOK and INSTAGRAM Marks including, among other things, by way of their U.S. trademark registrations set forth above. The Domain Names identically reproduce Complainants’ FACEBOOK and INSTAGRAM Marks in their entirety, adding the dictionary terms “animal”, “animals”, “for”, “a”, “mascots”, “ride”, “car”, “cars”, or the letter “s” under the “.com”, “.info”, “.net” and “.org” gTLDs and under the “.co” ccTLD for Colombia. It is sufficient to establish identify or confusing similarity for purposes of the Policy where a domain name wholly incorporates a complainant’s registered mark. See, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. The Domain Names differ from the Marks merely because of the addition of dictionary terms and the letter “s”. These additions do not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
Including gTLDs such as “.com,” “.info,” “.net,” “.org” and “.co” or the geographic indication “.co” in the Domain Names does nothing to prevent a finding of confusing similarity. Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006.
The Panel therefore holds that Complainants have established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Complainants must prove Respondent has no rights to or legitimate interests in the Domain Names. If Complainants make a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names, the burden shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainants. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; see also section 2.1 of the WIPO Overview 3.0.
Complainants allege that Respondent lacks any rights or legitimate interests in the Domain Names for the following reasons, including: (1) Respondent is not a licensee of Complainants, nor have Complainants otherwise given Respondent the authority to use the Marks; (2) all of the Domain Names apart from are pointing to web pages displaying the words “coming soon” with no other content, or to inactive web pages. Such uses are not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Names; (3) the use of the Domain Name with a social network website is not a bona fide offering of goods or services or is it a legitimate noncommercial or fair use of the Domain Name; (4) Respondent cannot assert that he is commonly known by the Marks given their notoriety and the fact that FACEBOOK and INSTAGRAM are inherently distinctive marks that are exclusively associated with Complainants; and (5) Respondent has not secured or even sought to secure any valid trademark rights in the terms FACEBOOK and INSTAGRAM.
The Panel holds that Complainants have made a prima facie case that Respondent has no rights or legitimate interests in the Domain Names, shifting the burden to Respondent to produce evidence to rebut this presumption. Insofar as Respondent has failed to adduce any contrary evidence, Complainants’ facts are sufficient to permit a finding in Complainant’s favor on this issue.
The Panel therefore holds that Complainants have established the second element of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate it did not register and use the Domain Names in bad faith. Notwithstanding that, considering the worldwide use of the Marks well before Respondent registered the Domain Names and the renown of the Marks, the Panel finds that it is highly likely Respondent had actual knowledge of Complainants and their Marks when it registered – 25 times – Domain Names which incorporate the Marks in their entirety. Respondent's use of the Domain Name to resolve to a website offering a social network platform is further evidence that Respondent was at least aware of Facebook and its FACEBOOK Mark.
With regard to bad faith use of the Domain Names, prior cases have established that the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding, in the presence of other circumstances evidencing bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel has already found that the FACEBOOK and INSTAGRAM Marks are well-known trademarks, that Respondent likely knew about Complainants and their rights in the Marks when they registered the Domain Names, and that Respondent does not have any rights or legitimate interests in the Marks. Indeed, it is difficult to imagine any circumstances in which Respondent could use the Domain Names without possibly infringing Complainants’ registered Marks. Respondent has parked all but one of the Domain Names without using them and without submitting any evidence whatsoever of any good faith use of or intention to use the Domain Names. All these circumstances point to bad faith on the part of Respondent at the time of registration, and continued bad faith throughout his passive holding of the Domain Names.
The Domain Name resolves to a website offering social network services that compete with Complainant Facebook. Thus, the Panel finds that the Domain Name was registered and is being used by Respondent to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s FACEBOOK Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s failure to respond to Complainant’s cease and desist letter is an additional indicator of Respondent’s bad faith. See Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066.
The Panel therefore holds that Complainants have established the third element of paragraph 4(a) 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:
1. The Domain Names, , , , , , , , , , , , , and be transferred to Complainant Facebook Inc; and
2. The Domain Names , , , , , , , , , , , and be transferred to Complainant Instagram, LLC.
Harrie R. Samaras
Sole Panelist
Date: December 12, 2018
Full & Egal Universal Law Academy