Complainant is Facebook, Inc. and Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Karunakar kotha, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 15, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 17, 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 Respondent of the Complaint, and the proceedings commenced on December 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2021. The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 9, 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 Complainants Facebook, Inc. and Instagram, LLC are commonly controlled enterprises. For purposes of this decision they are treated, and are referred to herein, as a single enterprise, “Complainant”. Complainant is the owner of registrations for the trademarks (including service marks) FB and INSTAGRAM on the Principal Register of the United States Patent and Trademark Office (USPTO), including for FB, registration number 4,659,777, registration dated December 23, 2014, in International Class (IC) 35, covering “promoting the goods and services of others over the Internet”, and; for INSTAGRAM, registration number 4,146,057, registration dated May 22, 2012, in IC 9, covering “downloadable computer software for modifying the appearance and enabling transmission of photographs”. Complainant is the owner of registrations for the trademarks FB and INSTAGRAM on the trademark registry of the European Union Intellectual Property Office (EUIPO), for FB, registration number 008981383, registration dated August 23, 2011, in IC 45, covering “social networking services”, and; for INSTAGRAM, registration number 014493886, registration dated December 24, 2015, in ICs 25, 35, 38, 41, and 45, covering, inter alia, clothing, marketing and promotion services, telecommunication services, providing computer databases, and online social networking services. Complainant operates an online social networking, advertising and related services platform principally under the name and trademark “Facebook”, and also operating under the trademark FB. Complainant operates an online service for posting and distributing photos and videos under the INSTAGRAM trademark. According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the record of registration of the disputed domain name is May 18, 2020. There is no evidence on the record of this proceeding that any party other than Respondent has been registrant of the disputed domain name. Respondent has not associated the disputed domain name with an active website, and it apparently has not otherwise made use of the disputed domain name. In September 2020, Complainant attempted to establish contact with Respondent through the Registrar’s online form made available for that purpose. Respondent did not contact Complainant in reply. The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant contends that it has rights in the trademarks FB and INSTAGRAM and that the disputed domain name is confusingly similar to those trademarks. Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (2) Respondent cannot legitimately claim to be commonly known by the disputed domain name, or a name corresponding to the disputed domain name; (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and passive holding in circumstances here does not establish rights or legitimate interests. Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) in light of the well-known character of Complainant’s trademarks, Respondent cannot claim to have been unaware of Complainant’s trademarks when it registered the disputed domain name; (2) bad faith use of the disputed domain name may be found on the basis of passive holding in circumstances, as here, where (a) Complainant’s trademarks are well known internationally; (b) despite Complainant’s efforts to contact Respondent, Respondent has not come forward with any response or evidence of bona fide intent in relation to the disputed domain name; (c) the combination of Complainant’s two trademarks carries a high risk of Internet user affiliation of the disputed domain name with Complainant, and; (3) there is no conceivable good faith use which Respondent could make of the disputed domain name, creating an abusive threat hanging over Complainant. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier delivery could not be completed. There is no evidence on the record of the proceeding as to whether email notice was received by Respondent at the contact information it provided. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar Complainant has provided substantial evidence of rights in the trademarks FB and INSTAGRAM, including by registration at the USPTO and EUIPO, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademarks. The Panel determines that Complainant has established rights in the FB and INSTAGRAM trademarks. The disputed domain name directly and fully incorporates Complainant’s FB and INSTAGRAM trademarks. From the standpoint of the Policy, this is sufficient to establish confusing similarity between the disputed domain name and the trademarks. The disputed domain name is confusingly similar to Complainant’s FB and INSTAGRAM trademarks. The Panel determines that Complainant has established rights in the FB and INSTAGRAM trademarks and that the disputed domain name is confusingly similar to those trademarks within the meaning of the Policy. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Passive holding by Respondent of the disputed domain name in the circumstances present here do not establish rights or legitimate interests in favor of Respondent. These circumstances include that Respondent has not provided any evidence of preparations that might entail bona fide use of the disputed domain name, or some other plausible basis for establishing bona fide use. In addition, Internet users familiar with Complainant would likely find the combination of the FB trademark acronym (for Complainant’s principal Facebook identifier) with its distinctive INSTAGRAM trademark to indicate an association with Complainant. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith The evidence presented by Complainant indicates that Respondent registered but, to the best of its knowledge, has not actively used the disputed domain name in connection with a website or other online activity. The Panel notes that abuse of domain names through their incorporation as domains in deceptive email addresses has become a regrettably common phenomenon. Finding such abuse may be difficult in the absence of detection by, and notification from, the recipient(s) of such intentionally deceptive emails. Trademark owners may be placed in a precarious position should they be required to wait for evidence of “active abuse” of that common type because, by the time the trademark owner and email user have been made aware of the abuse, an injury may already have been suffered by the email recipient and/or the trademark owner. Given these risks, it is not unreasonable for the Panel to find that bad faith use of the disputed domain name is evidenced by registration and passive holding in circumstances such as those here. That is, in this case where the trademarks of the Complainant are very well known by Internet users and where Respondent must have been aware of that well-known character when it registered the disputed domain name. Complainant has provided substantial evidence of the well-known character of the INSTAGRAM trademark that identifies one of the most widely used websites and mobile application services worldwide. Although Complainant’s principal online social networking platform generally operates and is known by “Facebook”, Complainant has provided evidence that it uses the identifier FB in various registered domain names, and that Internet users (including journalists) are familiar with and use its FB identifier. The Panel does not assert categorically that no conceivable good faith use of the disputed domain name could ever be made by Respondent since there is a wide universe of potential uses. But with that caveat of “never say never”, it is difficult for the Panel to foresee a potential good faith use by Respondent, and Respondent has failed to provide any suggestion regarding a plausible good faith use. In light of the substantial risks to Complainant and to Internet users posed by registration and apparent passive holding of the disputed domain name, the Panel determines that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b) 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 name, Frederick M. Abbott
Sole Panelist
Date: February 24, 2021
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