The Complainants are Facebook, Inc. and Instagram, LLC, United States of America (“United States” or “U.S.”), represented by Tucker Ellis, LLP, United States.
The Respondent is Pasabey Demir, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2021, 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 the Complainants on August 30, 2021, 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 on September 3, 2021.
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, and the proceedings commenced on September 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2021.
The Center appointed Theda König Horowicz as the sole panelist in this matter on October 12, 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 BackgroundThe Complainant Facebook Inc. operates the world-famous Facebook social networking website and mobile application and owns the exclusive rights to the FB trademarks and service marks which have been in use as of 2011. It notably owns the following registrations for the trademark “FB”:
- U.S. Trademark Registration No 4659777 registered on December 23, 2014;
- European Union (“EU”) Trademark Registration No 008981383 registered on August 23, 2011.
The Complainant Facebook, Inc. also owns and uses the domain name
The Complainant Instagram, LLC is owned by the Complainant Facebook, Inc. Instagram, LCC operates the Instagram social networking service and mobile application and owns the exclusive rights to the INSTAGRAM trademarks and service marks which have been in use since 2010. The website under the domain name
- U.S. Trademark Registration No 4146057 registered on May 22, 2012;
- International Trademark Registration No 1129314 registered on March 15, 2012 which notably covers Turkey, where the Respondent is based;
- EU Trademark Registration No 012111746 of March 6, 2014.
The disputed domain name was registered on March 24, 2021 and resolves to an inactive webpage.
5. Parties’ Contentions A. ComplainantsThe Complainants allege to have extensive trademark and service mark rights from their prior and extensive use of their respective FB and INSTAGRAM trademarks, as well as multiple registrations for the said names. The disputed domain name which adds the term “help” to the Complainants’ FB and INSTAGRAM trademarks is confusingly similar to the Complainants’ FB and INSTAGRAM trademarks. The addition of the descriptive term “help” to the Complainants trademarks fails to distinguish the disputed domain name from their trademarks. Furthermore, the addition of this term is descriptive of and relevant to Complainant’s services. As a result, the disputed domain name is not sufficiently distinguishable from Complainant’s respective FB and INSTAGRAM trademarks. The addition of a hyphen does not change that the disputed domain name is confusingly similar to the Complainant’s respective FB and INSTAGRAM trademarks. Lastly, the addition of a generic Top-Level Domain (“gTLD”) has no distinguishing value in the Policy.
The Complainants further allege that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainants invoke the following arguments in order to support their position in this regard:
- The Complainants have not licensed or authorized the Respondent to use their respective FB or INSTAGRAM trademarks.
- The Respondent does not have any legal relationship with the Complainants that would entitle the Respondent to use the FB and INSTAGRAM trademarks.
- The Respondent is not known by the disputed domain name.
- The Respondent is passively holding the disputed domain name and there are no indications that the Respondent plans to use it.
Under the circumstances, the Complainants are of the opinion that (i) the Respondent is not making a bona fide offering of goods or services at the disputed domain name (ii) the Respondent is not commonly known by the disputed domain name (iii) the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainants finally state that the Respondent has registered and is using the disputed domain name in bad faith, notably due to its passive holding. Furthermore, the Complainants trademarks are well known and the registration of the disputed domain name which contains these well-known trademarks thus suggests bad faith.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsUnder the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainants showed trademark rights in FB and INSTAGRAM through several trademark registrations worldwide.
According to section 1.7, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name contains the FB and INSTAGRAM trademarks in their entirety. The mere addition of the descriptive term “help” does not prevent a finding of confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1, WIPO Overview 3.0.
The Complainants made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain name.
In particular, the Panel notes that the case file does not show that the Respondent would be known by FB and INSTAGRAM or that a legitimate business would be run by the Respondent under the disputed domain name.
Based on the above, the Panel considers that the Complainants have made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file which would show that the disputed domain name has been legitimately used by the Respondent or that that the Respondent would have any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, incorporating the Complainants’ well-known trademarks and a descriptive term, carries a risk of implied affiliation (see section 2.5.1, WIPO Overview 3.0).
Consequently, the Panels finds that the Complainants have established their case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainants have shown that their respective FB and INSTAGRAM trademarks have been used since several years and registered since 2011 and 2012 respectively in many countries. It is undisputed and of public knowledge that both trademarks have been widely used on the Internet, through social media and in apps. FB and INSTAGRAM due their worldwide use and popularity have obviously not only acquired a high distinctiveness to distinguish the services of the Complainants but also the status of well-known trademarks.
Hence, the Panel finds that the Respondent thus knew or should have known of about the Complainants respective trademarks and deliberately registered the confusingly similar disputed domain name (see section 3.2.2, WIPO Overview 3.0).
The disputed domain name resolves to an inactive webpage. Based on the circumstances of this case, passive holding of the disputed domain name does not prevent a finding of bad faith.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings which is further indication of bad faith in the present circumstances.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainants have established their case under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Theda König Horowicz
Sole Panelist
Date: November 2, 2021