The Complainants are Facebook, Inc., United States of America (“United States”), Instagram, LLC, United States, and WhatsApp Inc., United States, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Jay Neeme, United States, Domain Administrator, PrivacyGuardian.org, United States, and Jurgen Neeme, hello@thedomain.io, Estonia. 2. The Domain Names and Registrars
The disputed domain names The disputed domain names The two registrars of the disputed domain names are being referred to in this decision as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 20, 2020, the Center transmitted by email to each of the Registrars a request for registrar verification in connection with the disputed domain names. Between April 20 and 26, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 3, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on April 20, 2020. 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 Complaint in this administrative proceeding has been submitted by Facebook, Inc., together with its subsidiaries Instagram, LLC, and WhatsApp Inc. Facebook, Inc. (the “First Complainant”) is a worldwide renowned provider of online social networking services, launched in 2004. It has more than 2 billion active users and almost 1.62 billion daily active users worldwide. Its main website at “www.facebook.com” is currently ranked as the 4th most visited website in the world. Instagram, LLC (the “Second Complainant”) is the provider of one of the world’s leading online photo and video sharing social networking applications. It was acquired by the First Complainant in 2012, and now has over 1 billion monthly active users. Its website at “www.instagram.com” is ranked the 30th most visited website in the world. WhatsApp Inc. (the “Third Complainant”) is the provider of one of the world’s most popular mobile messaging applications. It was founded in 2009 and was acquired by the First Complainant in October 2014. Today, it has over 1.6 billion monthly active users worldwide. The First Complainant owns the following trademark registrations for the sign FACEBOOK (the “FACEBOOK trademark”): - the United States trademark FACEBOOK with registration No. 3041791, registered on January 10, 2006 for services in International Class 38; and - the International trademark FACEBOOK with registration No. 1075094, registered on July 16, 2010 for goods and services in International Classes 9, 35, 36, 38, 41, 42, and 45. The First Complainant also owns the United States trademark FB with registration No. 4782235, registered on July 28, 2015 for services in International Class 38 (the “FB trademark”). The Second Complainant owns the following trademark registrations for the sign INSTAGRAM (the “INSTAGRAM trademark”): - the United States trademark INSTAGRAM with registration No. 4146057, registered on May 22, 2012 for goods in International Class 9; and - the International trademark INSTAGRAM with registration No. 1129314, registered on March 15, 2012 for goods and services in International Classes 9 and 42. The Second Complainant owns the following trademark registrations for the sign INSTA (the “INSTA trademark”): - the United States trademark INSTA with registration No. 5061916, registered on October 18, 2016 for goods in International Class 9; and - the European Union trademark INSTA with registration No. 014810535, registered on May 23, 2018 for goods in International Class 9. The Third Complainant owns the following trademark registrations for the sign WHATSAPP (the “WHATSAPP trademark”): - the United States trademark WHATSAPP with registration No. 3939463, registered on April 5, 2011 for services in International Class 42; and - the International trademark WHATSAPP with registration No. 1085539, registered on May 24, 2011 for goods and services in International Classes 9 and 38. The FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP trademarks will be jointly referred to in this decision as the “Trademarks”. The Complainants are bringing the Complaint against multiple respondents. The Respondent Jay Neeme is the registrant of the following disputed domain names: - - The Respondent Jurgen Neeme, hello@thedomain.io is the registrant of the following disputed domain names: - The disputed domain names currently resolve to very similar parking webpages, apart from the disputed domain name According to the Complainants, the disputed domain names are identical or confusingly similar to the Trademarks, as they incorporate the Trademarks in their entirety, with the addition of the generic terms “buy”, “follower”, “followers”, “follow”, “bot”, “share”, “vip”, “messenger”, “mobile” and “web”, which do not diminish the confusing similarity with the Trademarks, the latter being clearly recognizable in the disputed domain names and their dominant component. The disputed domain names The Complainants submit that the Respondents have no rights or legitimate interests in the disputed domain names, as the Respondents are not commonly known by the Trademarks and have not been allowed by the Complainants to use them. The Complainants state that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services and are not making a legitimate noncommercial or fair use of them without intent for commercial gain. All of the disputed domain names, apart from The Complainants contend that the disputed domain names were registered and are being used in bad faith. They submit that the Respondents registered the disputed domain names with knowledge of the Trademarks, which are highly distinctive and renowned throughout the world, and have been continuously and extensively used for many years and predate the registration of the disputed domain names. The Complainants further submit that the Respondents have registered the disputed domain names in order to prevent the Complainants from reflecting the Trademarks in corresponding domain names, and have engaged in a pattern of such conduct. The Respondents were previously the registrants of at least 24 other domain names infringing the Trademarks, which were recovered by the Complainants in two prior UDRP proceedings (Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme,WIPO Case No. D2019-1582, and Facebook, Inc. v. Jurgen Neeme,WIPO Case No. D2019-2779). The Complainants point out that the Respondents are offering each of the disputed domain names for sale for the same price of USD 4,930. According to the Complainants, the Respondents are using the disputed domain names to intentionally attract Internet users to its websites by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of the websites, and are thus seeking to obtain financial gain derived from the goodwill and reputation attached to the Trademarks. The Complainants request the transfer of the disputed domain names The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Procedural issue - Consolidation The Complainants have jointly filed the Complaint and submit a request for consolidation of their disputes with the Respondents in respect of the disputed domain names. The Complainants maintain that the disputed domain names are under common control, as all of them apart from Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. The Policy and the Rules do not directly regulate the consolidation of multiple Complainants in a single Complaint. As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether 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 whether it would be equitable and procedurally efficient to permit the consolidation. The Complainants have shown that the Second and the Third Complainant are subsidiaries of the First Complainant, and they have brought forward certain common grievances against the Respondents in the Complaint. The Respondents have not objected to the consolidation of the Complainants and have not advanced any reasons why it may not be equitable and procedurally efficient to consolidate the Complainants. Therefore, the Panel decides to allow the consolidation of the Complainants in this proceeding. The second issue to be considered here is the consolidation of the Respondents and the disputed domain names in the present proceeding. As discussed in section 4.11.2 of the WIPO Overview 3.0, where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of the registrants’ identities, their contact information, relevant IP addresses, name servers, and the content or layout of websites corresponding to the disputed domain names, among others. The Panel is satisfied that the Complainants have shown good reasons why the consolidation of the Respondents and the disputed domain names in a single proceeding is justified and appropriate in the circumstances. As confirmed by the Registrars, ten of the disputed domain names have been registered in the name of Jurgen Neeme, and the two other disputed domain names have been registered in the name of Jay Neeme. These two names are similar, and the Complainants have provided evidence that the email address indicated by the second registrant (Jay Neeme) used to be identical to the email address provided by the first registrant (Jurgen Neeme), and that all of the disputed domain names resolve to very similar parking webpages , apart from the disputed domain name 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names: (i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”. The Respondents have however not submitted a Response and have not disputed the Complainants’ contentions and evidence in this proceeding. A. Identical or Confusingly Similar The Complainants have provided evidence for the registration of the FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP trademarks. They submit that given that the Second and the Third Complainant are wholly‑owned subsidiaries of the First Complainant, all of them have a sufficient common legal interest in the Trademarks. As discussed in section 1.4.1 of the WIPO Overview 3.0, a trademark owner’s affiliate is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. In view of this, the Panel accepts that the Complainants have established their rights in the Trademarks for the purposes of the present proceeding. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic and country code Top-Level Domain (“gTLD” and “ccTLD”, respectively) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com”, “.online”, “.live”, “.xyz”, “.top”, “.tech”, and “.site” gTLDs and the “.co” ccTLD of the disputed domain names. The relevant parts of the disputed domain names therefore either incorporate one of the Trademarks in its entirety, adding to it dictionary words or common abbreviations such as “buy”, “followers”, “follower”, “follow”, “bot”, “share”, “vip”, “messenger”, “mobile” and “web”, or are deliberate misspellings of one of the Trademarks replacing a single letter with a digit or with another letter - in “facebo9k” and “insdagram”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. Likewise, the replacement of a single letter in two of the disputed domain names does not significantly affect their appearance or pronunciation. In view of the above, the Panel finds that the disputed domain name While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainants contend that the Respondents have no rights or legitimate interests in the disputed domain names, stating that the Respondents are not commonly known by the Trademarks and have not been allowed by the Complainants to use them, and are using most of the disputed domain names to point to websites containing commercial pay-per-click links, the majority of which targeting the Trademarks, and is using the disputed domain name The Respondents had ample opportunity to present their case and to provide an explanation why they have chosen to register the disputed domain names and how they intend to use them, but refrained from doing so. The disputed domain names are confusingly similar to the well-known Trademarks of the Complainants. The Respondents do not deny that they had knowledge of the Complainants when they registered the disputed domain names. Internet users may be attracted by the disputed domain names in the mistaken belief that they refer to online locations authorized by the Complainants, but will instead arrive at websites mostly featuring commercial pay-per-click links. As discussed in section 2.9 of the WIPO Overview 3.0, the use of a domain name to host a page comprising pay-per-click links would be permissible where the domain name consists of actual dictionary words or phrases and is used to host pay-per-click links genuinely related to the dictionary meaning of the words or phrases comprising it, and not to trade off the complainant’s trademark. However, in the case at hand 11 out of the 12 disputed domain names resolving to parking pages displaying pay-per-click links with one disputed domain name resolving to a dynamically changing website incorporate the distinctive Trademarks of the Complainants and risk misleading Internet users and capitalizing on the reputation of the Trademarks. In addition, as pointed out by the Complainants, all the disputed domain names are offered for sale for an amount that significantly exceeds the normal out-of-pocket expenses for the registration of domain names. In view of the above, it appears to the Panel that it is more likely than not that the Respondents, being aware of the goodwill of the Complainants and of their well-known Trademarks, have registered and used the disputed domain names in an attempt to receive a commercial gain through the operation of pay-per-click links on the associated websites or through their sale at a significant price. To the Panel, such conduct does not appear to be fair or giving rise to rights or legitimate interests of the Respondents in the disputed domain names. Therefore, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Respondents have incorporated the Complainants’ FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP trademarks or their deliberate misspellings in the disputed domain names. As discussed above, most of the disputed domain names are associated with parking webpages displaying pay-per-click links many of which refer to the Complainants. This is sufficient to satisfy the Panel that the Respondents must have been well aware of the Complainants and of the Trademarks when they registered the disputed domain names and that they have targeted the Trademarks with the registration of the disputed domain names. Even if these links were automatically generated by a third party, this does not discharge the Respondents of responsibility for the content of the websites associated to the disputed domain names under their control. See section 3.5 of the WIPO Overview 3.0. All of the disputed domain names have been offered for sale for a significant price in excess of the normal out-of-pocket expenses for their registration. In addition, in previous decisions under the Policy, the Respondents have been found to have acted in bad faith with the registration and use of other domain names targeting the Complainants’ Trademarks (see Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme, supra, and Facebook, Inc. v. Jurgen Neeme, supra), which shows a specific pattern of bad faith conduct vis-à-vis the Complainants. In consideration of the above, the Panel finds that the Respondents have registered the disputed domain names with the intent to profit from them or otherwise exploit the Complainants’ Trademarks either through the generation of revenue from pay-per-click links or through the sale of the disputed domain names to the Complainants or to their competitors for valuable consideration in excess of their documented out-of-pocket costs incurred at the time of registration. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel: a) orders the transfer of the disputed domain names b) orders the transfer of the disputed domain names c) orders the transfer of the disputed domain names Assen Alexiev
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(iii) the Respondents have registered and are using the disputed domain names in bad faith.
Sole Panelist
Date: May 7, 2020
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