The Complainants are Facebook Inc., Instagram, LLC, and WhatsApp Inc., United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Minghua Chen / Chen Minghua, China. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on October 13, 2020. On October 14, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. Between October 15, 2020 and November 6, 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 November 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on November 20, 2020. On November 16, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants confirmed its request that English be the language of the proceeding on November 16, 2020. The Respondent did not comment on the language of the proceeding. 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 Respondent of the Complaint in English and Chinese, and the proceeding commenced on December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2021. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 8, 2021. 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. Complainant The Complainant Facebook Inc. is a company founded in the US in 2004, and one of the world’s leading providers of online social networking services, under the trade mark FACEBOOK. The Complainant Instagram, LLC is a wholly-owned subsidiary of the Complainant Facebook Inc., founded in the US in 2010, and the developer and owner of the world’s leading online photo and video sharing social networking application, under the trade mark INSTAGRAM. The Complainant WhatsApp Inc. is a wholly-owned subsidiary of the Complainant Facebook Inc., founded in the US in 2009, and the operator of one of the world’s most popular communication applications, with over half a billion users worldwide, under the trade mark WHATSAPP. The Complainants’ The Complainants are the owners of numerous registrations in jurisdictions worldwide for their FACEBOOK, INSTAGRAM and WHATSAPP trade marks (the “Trade Mark(s)”), including: (i) Chinese registration No.5251162 for the Trade Mark FACEBOOK, registered on September 21, 2009; US registration No. 3041791 for the Trade Mark FACEBOOK, registered on January 10, 2006; International registration No. 1075094 for the Trade Mark FACEBOOK, registered on July 16, 2010; (ii) Chinese registration No. 10614690 for the Trade Mark INSTAGRAM, registered on June 14, 2013; US registration No. 4146057 for the Trade Mark INSTAGRAM, registered on May 22, 2012; International registration No. 1129314 for the Trade Mark INSTAGRAM, registered on March 15, 2012; and (iii) Chinese registration No. 21470703A for the Trade Mark WHATSAPP, registered on December 21, 2017; US registration No. 4083272 for the Trade Mark WHATSAPP, registered on January 10, 2012; and International registration No. 1085539 for the Trade Mark WHATSAPP, registered on May 24, 2011. The Complainants are the owners of numerous domain names comprising the Trade Marks, under generic Top-Level Domains (“gTLD”) and country code Top-Level Domain (“ccTLD”) extensions, including The Complainants’ websites are inaccessible in mainland China, but the Complainants and their Trade Marks have received widespread coverage in Chinese press (including China’s state media People’s Daily). B. Respondent The Respondent is apparently an individual resident in China. C. The Disputed Domain Names The disputed domain names The disputed domain names The disputed domain names The Complainant contends that the disputed domain names are 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 were 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). In the present proceeding, the Complainants have requested consolidation, due to their common legal and business interest in the Trade Marks; and their specific common grievance against the Respondent. The Respondent has not made any submissions on this issue. The Panel finds that the Complainants, as related entities sharing the same principal place of business, have common grievances against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants’ rights in a similar fashion. The Panel also finds that it would be procedurally efficient and equitable 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 Complainants in this proceeding. 6.2 Consolidation of Respondents The disputed domain names The disputed domain names The WhoIs records for each of the disputed domain names contain identical telephone numbers and email addresses, and nearly identical registrant names and addresses. The difference in the registrant names can be explained by the fact the surname (in the present proceeding, “Chen”) typically comes first in Chinese language and culture; and the given name (in the present proceeding, “Minghua”) second; although it is also not uncommon for persons in China to use the standard nomenclature used in Western countries of placing the surname last. There are in addition certain commonalities in the manner of use of the disputed domain names – they have either been not used; or essentially passively held in respect of various similar template websites. For the above reasons the Panel concludes that, in all the circumstances and for the reasons set out above, it is highly likely that the Respondent Minghua Chen is the same person as the Respondent Chen Minghua. 6.3 Language of the Proceeding The language of the Registration Agreement for nine of the disputed domain names is English. The language of the Registration Agreement for the remaining eight 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 burden being placed on the parties and undue delay to the proceeding. The Complainant made the following submissions in support of its language request: (i) The language of the Registration Agreements for nine of the disputed domain names is English, and those disputed domain names have been registered with a Registrar based in the US, which suggests that the Respondent understands English; ii) The disputed domain names consist of Latin characters and some of them incorporate English dictionary terms, such as “movie”, “growth”, “happy new year” and “get certified”; and iii) It would be disproportionate to require the Complainant, an international business, which operates primarily in English, to translate and submit the present Complaint in Chinese as this would result in additional expenses and unnecessary delay for the Complainant. The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding. 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 finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. 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. 6.4 Substantive Elements of the Policy The Complainant 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 Complainant has rights in the Trade Marks acquired through use and registration. The disputed domain names 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 disputed domain names The Panel therefore finds that the disputed domain names are confusingly similar to the relevant 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 the 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 organisation) 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 names, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have either not been used, or have been essentially passively used in respect of various template websites. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. In addition, the Panel notes the nature of the disputed domain names, which carry a risk of implied association (see WIPO Overview 3.0, section 2.5.1). In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith In light of the manner of use by the Respondent of the disputed domain names, and also in light of the Respondent having engaged in a pattern of conduct of registering disputed domain names comprising the Complainant’s Trade Marks in order to prevent the relevant trade mark owners from reflecting their marks in corresponding domain names, the Panel finds that bad faith has been made out under paragraph 4(b)(ii) of the Policy. The Panel finds that, in light of the worldwide repute of the Trade Mark, and in light of the widespread media coverage obtained by the Complainant in mainland China, it is inconceivable that the Respondent was not aware of the Complainant and of its rights in the Trade Marks at the time of registration of the disputed domain names. The Panel also finds that, in light of the repute of the Trade Marks, and on the evidence herein, there cannot be any actual or contemplated good faith use of the disputed domain names by the Respondent. For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. 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 Sebastian M.W. Hughes
Sole Panelist
Dated: February 25, 2021
Full & Egal Universal Law Academy