ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Instagram, LLC, Meta Platforms, Inc. v. tan alisa, tecent, Sonia Webster Case No. DIO2024-0009 1. The Parties Complainants are Instagram, LLC and Meta Platforms, Inc., United States of America (“United States” or “US”), represented by Hogan Lovells (Paris) LLP, France. Respondents are tan alisa, tecent and Sonia Webster, United States. 2. The Domain Names and Registrars The disputed domain name is registered with TLD Registrar Solutions Ltd. The disputed domain name is registered with Name.com, Inc. (together with TLD Registrar Solutions Ltd., the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2024. On April 3, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 4, 2024, and April 8, 2024, 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 Complainants on April 9, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting Complainants to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainants filed an amended Complaint on April 12, 2024. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2023. The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 20, 2024. 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. Preliminary Matter: Consolidation A. Consolidation of Multiple Complainants Complainants are related companies. Specifically, Complainant Meta Platforms, Inc. (“Meta”), is the parent company, of which Complainant Instagram, LLC, is a wholly owned subsidiary (“Instagram” and collectively, the “Complainants”). Prior panels have found under such circumstances that it is appropriate for complainants to bring a joint complaint where: (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 4.11.1 (discussing when it is appropriate for multiple complainants to serve as joint complainants).1 The Panel finds that these criteria are satisfied, and it is appropriate to have joint Complainants in this proceeding. B. Consolidation of Multiple Respondents In response to verification requests from the Center, the Registrars named multiple underlying registrants, which are reflected in the amended Complaint. Complainants nevertheless allege that the disputed domain name registrants are the same entity or are otherwise under common control. Complainants thus request consolidation of the Complaint against the multiple registrants of the disputed domain names pursuant to paragraphs 3(c) and 10(e) and of the Rules. Pursuant to WIPO Overview 3.0, section 4.11.2, the Panel considers whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. In this regard, the disputed domain names were registered on the same date; the associated websites have similar content; and the contact information for both contains overlapping information. The Panel finds that Complainant has shown prima facie evidence of common control, which the listed registrants named collectively as Respondent have neither addressed nor rebutted. The request to consolidate is granted. 1 In light of the substantive and procedural similarities between the .IO Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited decisions under the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
page 3 C. Factual Background Meta, formerly known as Facebook, Inc., is a provider of online social networking services. Launched in 2004, Facebook has billions of users globally. Its main website is “www.facebook.com” and is among the most visited websites in the world. Instagram, similarly, is one of the world’s leading online photo and video social networking apps. Launched in 2010, Instagram was acquired by Facebook, Inc. in 2012. Instagram’s main website, “www.instagram.com”, is also among the most visited websites in the world. Complainants own trademark registrations for the marks FACEBOOK and INSTAGRAM. These include, among others, US Registration No. 3041791 for FACEBOOK (registered January 10, 2006), and US Registration No. 4146057 for INSTAGRAM (registered May 22, 2012). Complainants also own European Union Registration No. 017946393 (registered January 31, 2009) for IG. The disputed domain names were registered on March 29, 2023. Both have been linked to websites purporting to offer services that related to, or compete with, those offered by Complainants under their FACEBOOK and IG marks. Respondent has no affiliation with Complainants, nor any license to use their marks. 5. Parties’ Contentions A. Complainants Complainants contend that (i) the disputed domain names are identical or confusingly similar to Complainants’ trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith. Specifically, Complainants contend that they own the FACEBOOK and INSTAGRAM marks, as well as rights to the mark IG, which is a common and recognized abbreviation for INSTAGRAM. In addition to having billions of users globally, the FACEBOOK mark has been ranked among top-valued brands, including being designated at number 21 in Interbrand’s Best Global Brands of 2023. Complainants contend that Respondent has incorporated Complainants’ well-known FACEBOOK mark into the disputed domain name , and merely added the terms, “video downloader”, which consumers will associate with the social media features of Complainants’ FACEBOOK mark. Complainants similarly contend that Respondent has incorporated Complainants’ well-known IG mark into the disputed domain name , and merely added the term, “save”, which consumers will also associate with the social media features of Complainants’ IG mark. Complainants contend that Respondent lacks rights or legitimate interest in the disputed domain names, and rather has registered and is using them in bad faith, having simply acquired the disputed domain names for Respondent’s own commercial gain. B. Respondent Respondent did not reply to the contentions in the Complaint.
page 4 6. Discussion and Findings A. Identical or Confusingly Similar The Panel must first determine whether the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. Numerous panels have agreed that where the relevant mark is recognizable within the disputed domain name, the addition of a term or letters to a trademark does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain names are confusingly similar to a trademark in which Complainants have rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. Complainant has indicated that Respondent has no license from, or other affiliation with, Complainant. As noted in Section 5 of this Panel’s decision, Respondent did not reply to the Complainant’s contentions, and did not provide any evidence of legitimate use. Rather, the disputed domain names have been used to resolve to websites displaying in their entirety the Complainant’s FACEBOOK, INSTAGRAM, and IG marks in an alleged offer of competing services, which clearly does not constitute a bona fide offering. Therefore, the Panel finds that Complainant has provided sufficient evidence for a prima facie case of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted. C. Registered or Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered or used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain names have been linked to websites purporting to offer services that are related to, or compete with, those offered by Complainants under their FACEBOOK, INSTAGRAM, and IG marks. Respondent is thus using Complainant’s marks without an indication of rights or legitimate interests and apparently for Respondent’s own commercial gain. Respondent further provided the Registrars with false contact information and addresses. Respondent did not respond to the Complaint, nor to prior correspondence from Complainants. Furthermore, Complainants have demonstrated a high level of consumer exposure to their marks in jurisdictions around the world. A number of prior panels have found Complainant’s FACEBOOK and INSTAGRAM marks to be extremely well known. See, for example, Facebook Inc. v. Bolton, WIPO Case No. D2016-0623 (finding FACEBOOK to be “one of the most famous online trademarks in the world”); Instagram, LLC v. Zhou, WIPO Case No. D2014-1550 (finding INSTAGRAM to have “a strong presence online”). Given the level of exposure of Complainants’ marks and of their social networking services, the Panel would be hard pressed to find that Respondent was not aware of Complainant’s FACEBOOK, INSTAGRAM, and IG marks at the time of registering the disputed domain names. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph (4)(a)(iii) of the Policy.
page 5 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 be transferred as follows: 1. be transferred to Complainant Meta Platforms, Inc.; and 2. be transferred to Complainant Instagram, LLC. /Lorelei Ritchie/ Lorelei Ritchie Sole Panelist Date: June 3, 2024
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