The Complainants are Facebook, Inc. (the “First Complainant”), Instagram, LLC (the “Second Complainant”) and WhatsApp, Inc. (the “Third Complainant”), United States of America (“USA”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are JInsoo Yoon and Jeongwoo Cheon, Republic of Korea. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2020. On July 24, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 24 and 27, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on July 29, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to amend the Complaint adding the Registrar-disclosed registrants as the Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity, and/or that all disputed domain names are under common control, and/or file a separate complaint. The Complainants filed an amended Complaint on August 3, 2020. The Center verified that the Complaint together with the amended 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 August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 25, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 2, 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 Complainants are leading providers of online social networking and mobile messaging applications having its “www.facebook.com” and “www.instagram.com” websites ranked as the 3rd and 30th most visited websites in the world and its WhatsApp application counts with over 1.5 billion monthly active users as of October 2018 (Annex 9 to the Complaint). The First Complainant is the owner, amongst others, of the USA trademark registration no. 3122052 for FACEBOOK registered on July 25, 2006, and the International trademark registration No. 1232015 for FACEBOOK registered on December 15, 2014; the Second Complainant is the owner of the International trademark registration No. 1129314 for INSTAGRAM registered on March 15, 2012; and the Third Complainant is the owner of the International trademark registration No. 1085539 for WHATSAPP registered on May 24, 2011. The disputed domain names were registered on and are presently used in connection with: Disputed Domain Name Registration Date Present Use facebebook.com February 12, 2012 Redirection to random websites containing advertisements and including a website offering the disputed domain name for sale facebookb2b.com September 27, 2012 Parked page displaying pay-per-click (“PPC”) links and offering the disputed domain name for sale facebookbackgrounds.com January 27, 2012 Parked page displaying PPC links and offering the disputed domain name for sale facebookblog.com January 27, 2012 Parked page displaying PPC links and offering the disputed domain name for sale facebookwifi.com March 22, 2017 Parked page displaying PPC links and offering the disputed domain name for sale facebookcan.com January 16, 2016 Parked page displaying PPC links and offering the disputed domain name for sale facebookmoney.com October 28, 2016 Redirection to a website offering the disputed domain name for sale facebooktraining.com December 14, 2016 Parked page displaying PPC links and offering the disputed domain name for sale instagramacademy.com December 3, 2019 Parked page displaying PPC links and offering the disputed domain name for sale instagrambusiness.com July 6, 2018 Parked page displaying PPC links and offering the disputed domain name for sale whatsappcoin.com January 21, 2020 Parked page displaying PPC links and offering the disputed domain name for sale whatsapptaxi.com November 1, 2016 Parked page displaying PPC links and offering the disputed domain name for sale 5. Parties’ Contentions A. Complainant The Complainants assert to be the world’s leading providers of online social networking services and mobile messaging applications, actively promoting and using its famous FACEBOOK, INSTAGRAM and WHATSAPP trademarks throughout the world. The Complainants further submit that the disputed domain names are confusingly similar to the Complainant’s trademarks, being the disputed domain name Moreover, the Complainants assert that the Respondents have no rights or legitimate interests in respect of the disputed domain names given that: (a) the Respondents are not licensees of the Complainants, nor have they been otherwise allowed by the Complainants to make any use of the FACEBOOK, INSTAGRAM and WHATSAPP trademarks; (b) the Respondents cannot assert that they are using, or have made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy; (c) the Respondents are not commonly known by the disputed domain names nor have they acquired any rights over the terms Facebook, Instagram and Whatsapp which are exclusively associated with the Complainants; (d) given the overwhelming renown of the Complainants’ FACEBOOK, INSTAGRAM and WHATSAPP trademarks it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondents (or a third party) other than the Complainants that would not be illegitimate, as it would inevitably result in misleading diversion; and (e) the use made of the disputed domain names in connection with parked pages displaying PPC advertisements and redirection to random websites containing advertisements. As to the registration of the disputed domain names in bad faith the Complainants assert that the Respondents knew or should have known of the Complainants’ trademark rights at the time of the registration of the disputed domain names considering that they have acquired considerable goodwill and renown worldwide, which the Respondents are targeting in view of the offer for sale of each of the disputed domain names for USD 4,950 (Annex 13 to the Complaint). The Complainants further submit that the Respondents deliberately engaged in a pattern of bad faith conduct having registered a large number of domain names infringing upon the Complainants’ and third parties trademarks because the Respondent JInsoo Yoon has been the named respondent in at least seven other past UDRP decisions (Annex 14 to the Complaint). Thus, according to the Complainants, the Respondents are unfairly seeking to capitalize on the goodwill and fame of the Complainants’ trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of their websites, making Internet users believe that the websites are associated, endorsed or recommended by the Complainants, which is not true. B. Respondents The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Consolidation of Multiple Complainants and Respondents in a Single Administrative Proceeding The Complainants request under paragraph 3(c) and 10(e) of the Rules that this Panel accept multiple complainants and respondents in a single proceeding in view of the facts enumerated at section 5.A. above. Regarding the multiple Complainants in this case, the Panel notes that the Second and Third Complainants are both wholly-owned subsidiaries of the First Complainant. As such, the three Complainants have a sufficient common legal interest in the FACEBOOK, INSTAGRAM and WHATSAPP trademarks included in the disputed domain names to file a joint Complaint. Further, they have been the target of common conduct by the Respondents who have engaged in bad faith registration and use of the disputed domain names comprising their trademarks as discussed in details below. Therefore, it would be equitable and procedurally efficient to permit the consolidation of multiple Complainants. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the 12 disputed domain names dealt with at the same procedure, given that: a) they relate to the three different trademarks that belong to the Complainants, b) they are all offered for sale at USD 4,950 (Annex 13 to the Complaint), c) 10 out of 12 disputed domain names resolve to similar websites displaying PPC links (Annex 13 to the Complaint), and c) they have the similar naming pattern. In addition, the Respondents are both located in the Republic of Korea and share the same email address according to the information provided by the Registrars. This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties. Now, in what it relates to the merits of the case, the Panel will analyze the three requisite elements under paragraph 4(a) of the Policy which have to be met for this Panel to order the transfer of the disputed domain names to the Complainants: (i) the disputed domain names are identical or confusingly similar to the trademarks or service marks in which the Complainants have rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to them, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar The Complainants have established their rights in the FACEBOOK, INSTAGRAM and WHATSAPP trademarks. The Panel finds that the disputed domain names reproduce the Complainants’ trademarks in their entirety. The addition of the terms “b2b”, “backgrounds”, “blog”, “wifi”, “can”, “money”, “training”, “academy”, “business”, “coin” and “taxi”, and the inclusion of “be” in the disputed domain name The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks or service marks at issue. The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make a prima facie case against the Respondents. In that sense, the Complainants indeed state that the Respondents are not licensees of the Complainants, nor have they been otherwise allowed by the Complainants to make any use of the FACEBOOK, INSTAGRAM and WHATSAPP trademarks. Also, the lack of evidence that the Respondents are commonly known by the disputed domain names and the absence of any trademarks registered by the Respondents corresponding to the disputed domain names which incorporate notorious trademarks, corroborates the absence of any rights or legitimate interests in the disputed domain names. Moreover, given the evidence submitted, the Respondents are using a) 10 out of 12 disputed domain names in connection with parked pages displaying PPC advertisements some of which are connected to the Complainants’ activities, b) one disputed domain name for random redirection including a website offering it for sale, and c) one disputed domain name for a website offering it for sale, which clearly do not characterize a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The Policy indicates in paragraphs 4(b)(i) and 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has registered or 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 a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the Panel finds the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites or other online locations, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the websites or locations, earning revenues from PPC advertisements regarding 10 out of 12 disputed domain names. In addition, each of the disputed domain names is offering for sale for USD 4,950. Other factors that corroborate the Panel’s finding of the Respondents’ bad faith are: (i) the provision of what appears to be false or incorrect WhoIs information; (ii) the absence of a Response by the Respondents and (iii) the fact that the Respondents appear to have engaged in a pattern of bad faith conduct considering the Respondent JInsoo Yoon having been a named respondent in at least seven other UDRP decisions. For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names. 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 Wilson Pinheiro Jabur
Sole Panelist
Date: September 16, 2020
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