The Complainants are Facebook, Inc. (the “First Complainant”), United States of America (the “United States”), and Instagram, LLC (the “Second Complainant”), United States, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd., Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 2019, 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. 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 proceedings commenced on November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2019. The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on December 2, 2019. 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 The Complainants are a leading provider of online social networking services and mobile messaging applications and have rapidly developed considerable renown and goodwill worldwide. Their websites at “www.facebook.com” and “www.instagram.com” are currently ranked 7th and 29th respectively in the world, according to information company Alexa. Available in mobile devices, Facebook and Instagram are all among the top applications as per App Annie’s Top Apps Worldwide Rankings in 2019. The Complainants have secured ownership of numerous trademark registrations for the terms FACEBOOK and INSTAGRAM in many jurisdictions around the world, including but not limited to the following: - United States Trademark No. 3122052, FACEBOOK, registered on July 25, 2006; Copies of these trademark registrations were included at Annex 11 of the Complaint. Thus, the Complainants state that they have established rights in the FACEBOOK and INSTAGRAM trademarks. Further, the Complainants are the owners of numerous domain names consisting of the marks FACEBOOK and INSTAGRAM either under generic Top-Level Domain (“gTLD”) extensions, such as: The Complainants also state that previous UDRP panels have also recognized the strength and renown of the Complainants’ trademarks and have ordered the respondents to transfer the disputed domain names to the Complainants in numerous decisions. This dispute concerns the following three domain names, registered with Media Elite Holdings Limited: At the time of filing the Complaint, the disputed domain names The disputed domain name The disputed domain name All three disputed domain names target the Complainants by incorporating the Complainants’ FACEBOOK and INSTAGRAM trademarks in its entirety (or its variations), and all three disputed domain names are registered under the “.com” gTLD. Based on the foregoing, the Complainant submits that the disputed domain names are subject to common control, and that to allow consolidation of the present Complaint would be fair and equitable to all the Parties. The Complainants submit that the disputed domain names are confusingly similar to the Complainants’ trademarks for FACEBOOK and INSTAGRAM in jurisdictions throughout the world, including those mentioned under section 4. The disputed domain names The Complainants assert that previous UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy”. The Complainants further assert that it is well established in previous UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as “find” and “takipci hizmeti” (“tracker service” in Turkish), would not prevent a finding of confusing similarity under the first element. The disputed domain name The applicable “.com” gTLD may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. Therefore, the Complainants state that the disputed domain names are confusingly similar to the Complainants’ trademarks in accordance with paragraph 4(a)(i) of the Policy. In addition, the Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent is not affiliated with the Complainants and has not been authorized to use their marks in a domain name or otherwise. Furthermore, the use of the disputed domain names to host pay-per-click links and to dynamically redirect to random websites does not amount to a bona fide use of the disputed domain names for purposes of the Policy. Lastly, the Complainants state the disputed domain names were registered and used in bad faith as their marks are inherently distinctive and known worldwide, therefore the Respondent could not have been unaware of the Complainants’ marks when it registered the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Consolidation The Complainants have jointly filed this Complaint against a single Respondent. UDRP panels have accepted the consolidation of multiple complainants when 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 (see section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Based on the arguments put forward by the Complainants and the circumstances of the case, the Panel finds that the Complainants have a common legal interest in the trademarks reproduced in the disputed domain names and accepts the joint Complaint. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel considers that the information provided by the Complainants clearly attest that the disputed domain names can be considered confusingly similar to the Complainants’ FACEBOOK and INSTAGRAM trademarks. In this regard, the Panel agrees with the Complainants’ contentions that the addition to the trademarks of dictionary terms such as “find”, “my”, “pageaid”, and “takipci hizmeti” (“tracker service” in Turkish), would not prevent a finding of confusing similarity under the first element. Further, a typosquatted version of the Second Complainant’s INSTAGRAM trademark (i.e., an additional letter “g” has been inserted between the parts “inst” and “agram”) would follow in the same case, as previous UDRP panels have held that a domain name which consists of an intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. Furthermore, the applicable gTLD “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to trademarks because it is considered as a standard registration requirement. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainants’ trademarks FACEBOOK and INSTAGRAM, respectively; therefore, this requisite has been satisfied. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests it may have in the disputed domain names. Neither has the Respondent refuted the allegations made by the Complainants. Thus, the Panel shall decide on the basis of the statements and documents submitted by the Complainants and in accordance with the Policy. In this sense, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainants have effectively demonstrated to be the holders of registered trademarks and associated domain names, which are prior to the Respondent’s registration of the disputed domain names, and that they have not licensed the use or exploitation of the FACEBOOK or INSTAGRAM trademarks to the Respondent. The Respondent is not a licensee of the Complainants, nor has the Respondent been otherwise authorized by the Complainants to make any use of its FACEBOOK and/or INSTAGRAM trademarks, in a domain name or otherwise. Moreover, the Respondent cannot credibly claim to be commonly known by the disputed domain names, or a name corresponding to the disputed domain names, within the meaning of paragraph 4(c)(ii) of the Policy, given the Complainants’ notoriety. Therefore, in view of the unrebutted prima facie case made out by the Complainants, the Panel considers that the Complainants have fulfilled the second element required by the Policy. C. Registered and Used in Bad Faith This third element requires the Complainants to prove that (1) the disputed domain names were registered in bad faith and (2) are being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The disputed domain names incorporate the Complainants’ trademarks FACEBOOK and INSTAGRAM. The Panel finds the Respondent must have had knowledge of the Complainants’ trademarks and their rights therein at the time the Respondent registered the disputed domain names. These findings are based on: (i) the Complainants’ trademarks having a strong reputation and being widely known all over the world; (ii) the disputed domain names being confusingly similar to the Complainants’ trademarks; and (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain names. As the Complainants stated that the Respondent had engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the disputed domain names infringing the Complainants’ trademark rights, for the purpose of preventing the Complainants from reflecting their trademarks in corresponding domain names, it is relevant to consider previous UDRP decisions and section 3.1.2 of the WIPO Overview 3.0: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration”. Further, the fact that in this case the Respondent deliberately chose to conceal its identity, by means of a privacy protection service for the disputed domain names, may be considered another indication of bad faith. Given the overall circumstances of this case (in particular, the Complainants’ strong reputation worldwide, the international fame of their trademarks, and the nature of the websites to which the disputed domain names resolve), there is no reason that could justify why the Respondent would need to protect its identity by means of a privacy shield except to frustrate the purposes of the Policy or make it difficult for the trademark owners to protect their marks against infringement, dilution and/or cybersquatting. Furthermore, the Respondent’s general offer to sell the disputed domain name Finally, with reference to the passive holding of the disputed domain name, given the similarity of the three disputed domain names to the Complainants’ widely known FACEBOOK and INSTAGRAM trademarks and in light of the Complainants’ long standing use of the same, the Panel agrees that the Respondent’s motives to register the disputed domains name can only have been to create a likelihood of confusion with the Complainants’ mentioned trademarks. Consequently, for all the above reasons, the Panel finds that the Complainants have met the requirement of paragraph 4(a)(iii) 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 the disputed domain names Rodrigo Velasco Santelices
- European Union Trademark No. 004535381, FACEBOOK, registered on June 22, 2011;
- United States Trademark No. 4146057, INSTAGRAM, registered on May 22, 2012; and
- European Union Trademark No. 012111746, INSTAGRAM, registered on March 6, 2014.
Sole Panelist
Date: December 16, 2019
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