WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme
Case No. D2019-1582
1. The Parties
The Complainants are Facebook, Inc., United States of America (“United States”); Instagram, LLC, United States; WhatsApp Inc., United States; and Facebook Technologies, LLC, United States, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Jurgen Neeme, hello@thedomain.io, Estonia and Jay Neeme, Estonia.
2. The Domain Names and Registrars
The Disputed Domain Names <downloadwhatsapp.info>, <faceboo.co>, <facebooklikebutton.co>, <gbwhatsapp.me>, <instagram.me>, <instagrow.co>, <lazadaxinstagram.store>, <myinstagramphotos.site>, <ninstagram.com>, <taifacebookjava.xyz>, <whatsapp-chat.biz>, <whatsapphack.net>, and <whatsapp-phone.info> are registered with Dynadot, LLC (“Dynadot”).
The Disputed Domain Names <facebook-hack.com>, <facebookmensagens.com>, <facebook-mp3.com>, <gbwhatsapp.website>, <instagrammatome.site>, <omnioculus.com>, <whatsappp.club>, and <whatsappweb.online> are registered with NameSilo, LLC (“NameSilo”).
The Disputed Domain Name <instagra.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (“PDR Ltd.”).
The Disputed Domain Name <whatsappupgrade.co> is registered with 1API GmbH (“1API”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2019. On July 5, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. Between July 5 and 8, 2019, 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 12, 2019, 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 July 18, 2019.
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 July 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 13, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 21, 2019. 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
The present Complaint was filed by four separate Complainants, namely Facebook, Inc. (First Complainant); Instagram, LLC (Second Complainant), WhatsApp Inc. (Third Complainant); and Facebook Technologies, LLC (Fourth Complainant).
1. The First Complainant, Facebook Inc., is a multinational information and technology company and provider of online social networking services. The First Complainant is considered one of the world’s largest social media companies. The First Complainant was founded in 2004 and currently employs almost 40,000 employees in almost 40 countries. The First Complainant’s social media network, Facebook, has over 2 billion monthly active users worldwide.
The First Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the mark FACEBOOK, which it uses in connection with its social networking services. The First Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- FACEBOOK, European Union word mark registered with the European Union Intellectual Property Office (“EUIPO”) on June 22, 2011, under number 004535381 in classes 35 and 38;
- FACEBOOK, United States word mark registered with the United States Patent and Trademark Office (“USPTO”) on January 10, 2006, under number 78574726 in class 38.
2. The Second Complainant, Instagram LLC, is a multinational provider of photo and video sharing social networking services. The Second Complainant was acquired by the First Complainant in August 2012 and consequently serves as a wholly owned subsidiary of the First Complainant. The Second Complainant currently is the operator of one of the most popular mobile applications with over 1 billion monthly active users worldwide.
The Second Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the trademarks INSTAGRAM and INSTA, which it uses in connection with its photo and video sharing social networking services. The Second Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- INSTAGRAM, European Union word mark registered with the EUIPO on December 24, 2015, under number 014493886 in classes 25, 35, 38, 41 and 45;
- INSTA, European Union word mark registered with the EUIPO on May 23, 2018, under number 014810535 in class 9;
- INSTA, United States word mark registered with the USPTO on October 18, 2016, under number 86638028 in class 9.
3. The Third Complainant, WhatsApp Inc., is a multinational provider of so-called Over-The-Top (OTT) messaging and communications services. The Third Complainant was acquired by the First Complainant in October 2014 and consequently serves as a wholly owned subsidiary of the First Complainant. The Third Complainant currently is the operator of one of the most popular communication applications with over three billion users worldwide.
The Third Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the trademark WHATSAPP, which it uses in connection with its OTT messaging and communications services. The Third Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- WHATSAPP, European Union word mark registered with the EUIPO on October 25, 2011, under number 009986514 in classes 9, 38 and 42;
- WHATSAPP, United States word mark registered with the USPTO on April 5, 2011, under number 3939463 in class 42.
4. The Fourth Complainant, Facebook Technologies LLC, is an American company specialized in virtual reality hardware and software products and services. The Fourth Complainant was formerly known as Oculus VR before it was acquired by the First Complainant in March 2014 and consequently serves as a wholly owned subsidiary of the First Complainant.
The Fourth Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the trademark OCULUS, which it uses in connection with its virtual reality products and services. The Fourth Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- OCULUS, United States word mark registered with the USPTO on January 26, 2016, under number 4891157 in class 28;
- OCULUS, international word mark registered with the World Intellectual Property Organization (“WIPO”) in numerous jurisdictions on June 12, 2014, under number 1219324 in class 28.
The First, Second, Third and Fourth Complainant are hereafter collectively referred to as the “Complainants”.
The Complainants’ FACEBOOK, INSTAGRAM, INSTA, WHATSAPP, and OCULUS trade and service marks are hereafter collectively referred to as the “trademarks” or the “marks”.
The Disputed Domain Names
The Complaint is directed against 23 domain names registered with four different Registrars:
1. <downloadwhatsapp.info>, registered by Jurgen Neeme on November 4, 2018, resolving to an inactive webpage at the time of filing and currently used to (dynamically) redirect to a website displaying fraudulent news articles about an apparent Bitcoin scheme likely used for phishing activities;
2. <faceboo.co>, registered by Jurgen Neeme on September 27, 2017, resolving to an inactive webpage at the time of filing and currently used to (dynamically) redirect to a website displaying fraudulent news articles about an apparent Bitcoin scheme likely used for phishing activities;
3. <facebooklikebutton.co>, registered by Jurgen Neeme on September 26, 2018, and used in connection to a website displaying pay-per-click (“PPC”) links;
4. <gbwhatsapp.me>, registered by Jurgen Neeme on August 24, 2018, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
5. <instagram.me>, registered by Jurgen Neeme on May 3, 2015, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
6. <instagrow.co>, registered by Jurgen Neeme on March 8, 2019, and used to redirect to a page on “Uniregistry Market” offering the domain name for sale for an amount of 4,960 USD;
7. <lazadaxinstagram.store>, registered by Jurgen Neeme on March 21, 2019, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
8. <myinstagramphotos.site>, registered by Jurgen Neeme on July 30, 2018, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
9. <ninstagram.com>, registered by Jurgen Neeme on April 11, 2017, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
10. <taifacebookjava.xyz>, registered by Jurgen Neeme on December 28, 2018, and used in connection to a website displaying PPC links in Thai and English, some of which are referring to the Complainants;
11. <whatsapp-chat.biz>, registered by Jurgen Neeme on January 21, 2019, and used in connection to a website displaying PPC links;
12. <whatsapphack.net>, registered by Jurgen Neeme on June 11, 2017, and used in connection to a website displaying PPC links, all of which are referring to the Complainants;
13. <whatsapp-phone.info>, registered by Jurgen Neeme on October 26, 2018, previously used in connection to a website displaying PPC links and currently used to (dynamically) redirect to a website displaying fraudulent news articles about an apparent Bitcoin scheme likely used for phishing activities;
14. <facebook-hack.com>, registered by Jurgen Neeme on November 29, 2017, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
15. <facebookmensagens.com>, registered by Jurgen Neeme on July 13, 2018, and used in connection to a website displaying PPC links in Portuguese, some of which are referring to the Complainants;
16. <facebook-mp3.com>, registered by Jurgen Neeme on November 13, 2017, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
17. <gbwhatsapp.website>, registered by Jurgen Neeme on February 10, 2019, and at the time of this decision used in connection to a website displaying PPC links, some of which are referring to competitors of the Complainants;
18. <instagrammatome.site>, registered by Jurgen Neeme on April 19, 2019, and used in connection to a website displaying PPC links in Portuguese and English, some of which at the time of this decision are referring to the Complainants;
19. <omnioculus.com>, registered by Jurgen Neeme on December 12, 2016, previously used to redirect to a page on “Uniregistry Market” offering the domain name for sale for an amount of 4,960 USD and currently used in connection to a website displaying PPC links, some of which are referring to the Complainants;
20. <whatsappp.club>, registered by Jurgen Neeme on December 30, 2018, and used in connection to a website displaying PPC links;
21. <whatsappweb.online>, registered by Jurgen Neeme on May 14, 2018, and used in connection to a website displaying PPC links, some of which are referring to the Complainants;
22. <whatsappupgrade.co>, registered by Juergen Neeme on July 20, 2018, which was previously used in connection to a website displaying PPC links and currently resolves to a suspended webpage;
23. <instagra.co>, registered by Jay Neeme on June 30, 2019, which previously resolved to a domain suspended webpage and currently is used in connection to a website displaying PPC links, some of which are referring to the Complainants;
hereinafter collectively referred to as the “Disputed Domain Names”.
All the Disputed Domain Names are registered using the same (or highly similar) postal address in Tallinn, Estonia.
22 out of 23 Disputed Domain Names were registered using the email address (hello@thedomain.io). The Disputed Domain Name <instagra.co> was registered using the email address (jn@ux.ht).
All the Disputed Domain Names are being offered for sale at “www.uniregistry.com” for the same exact amount of 4,960 USD each.
Named Respondent, Ju(e)rgen Neeme, has been the subject of various previous UDRP decisions which led to a transfer of the domain names at hand from the Respondent to the rightsholders (see, e.g., Verizon Trademark Services LLC v. Juergen Neeme, TheDomain.io, WIPO Case No. D2018-1125).
5. Parties’ Contentions
A. Complainants
The Complainants consider the Disputed Domain Names to be confusingly similar to trademarks in which they claim to have rights. The Complainants further claim that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainants, the Respondents have not used the Disputed Domain Names in connection with a legitimate use, as they deliberately create confusion with the Complainants to either (i) redirect to a fraudulent website or (ii) earn PPC revenue. Also, according to the Complainants, the Respondents are not commonly known by the Disputed Domain Names and are in no way affiliated with or authorized by the Complainants. Finally, the Complainants claim that the Disputed Domain Names were registered and are being used in bad faith. The Complainants contend that the Respondents knew of the existence of the Complainants’ trademark rights and has likely registered the Disputed Domain Names primarily for the purpose of selling them to the Complainants or their competitors for valuable consideration in excess of his documented out-of-pocket costs incurred at the time of registration. The Complainants further claim that the Respondents are using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the websites.
B. Respondents
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue 1: Multiple Complainants
In the present case, the Complaint was filed by four separate Complainants. While the Policy and Rules do not directly contemplate the consolidation of multiple complainants in a single administrative complaint, numerous panels have found that in certain circumstances such a consolidation may be permitted.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (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 section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))1.
In the case at hand, it is clear from the evidence provided by the Complainants that the Second, Third, and Fourth Complainant are all wholly owned subsidiaries of the First Complainant and that the Complainants therefore belong to the same corporate group with some sort of common control and management.
The Panel therefore finds that it is sufficiently established that the Complainants have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to consolidate the Complainants.
6.2. Preliminary Procedural Issue 2: Consolidation of Multiple Domain Names and Respondents
22 out of 23 Disputed Domain Names were registered using the same name, Jurgen Neeme (with a single minor variation in the spelling, Juergen Neeme, for the Disputed Domain Name <whatsappupgrade.co>), and email address (hello@thedomain.io). One of the Disputed Domain Names, <instagra.co>, was registered using a different first name, Jay Neeme, and email address (jn@ux.ht).
Paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain name holder. Previous panels have considered that multiple domain name registrants controlled by a single person or entity may be treated as a single respondent for purposes of the Policy and Rules (see Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729). Common control has been found where the respondents were related businesses (see Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al., WIPO Case No. D2004-0492). Common control or ownership also has been found in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names (see Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070. See also General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834). Similarly, decisions have been rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address (see, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587). Panels have found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage” (see CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071. See also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659).
The Panel considers that the consolidation of multiple registrants as Respondents in a single administrative proceeding may be appropriate under paragraph 3(c) or 10(e) of the Rules provided the Complainants can demonstrate that the Disputed Domain Names or the websites to which they resolve are subject to common control, and the Panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient, and fair and equitable to all parties (seesection 4.11.2 of the WIPO Overview 3.0).
In this instance, the Panel finds that the Complainants have established that, more likely than not, the Disputed Domain Names are subject to the common ownership or control of the same entity or person, namely Jurgen Neeme. All Disputed Domain Names were registered using identical or highly similar contact information, notably the postal address in Tallinn, Estonia. All but one Disputed Domain Name were registered using an email address configured to the same domain name <thedomain.io>. Although the Disputed Domain Name <instagra.co>, was registered using a different first name, Jay Neeme, and email address (jn@ux.ht), the Panel finds that the Complainants have sufficiently shown that this domain name is under the same control as the other Disputed Domain Names considering that <instagra.co> was previously registered using the same email address (hello@thedomain.io), is used in the same manner as the other Disputed Domain Names, is offered for sale at the exact same price as the other Disputed Domain Names on <uniregistry.com> and was registered using an almost identical postal address and an identical last name. In addition, none of the Respondents submitted a reply, denying the common ownership or control of the Disputed Domain Names.
In light of the above, the Panel finds that consolidation of the multiple Disputed Domain Names involving the multiple Respondents listed on the first page of this Decision pursuant to paragraph 10(e) of the Rules would be fair and procedurally efficient. Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding.
Accordingly, the Panel concludes that the consolidation of the multiple Disputed Domain Names asserted by the Complainants against the Respondents is consistent with the Policy and Rules and comports with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these Disputed Domain Names.
6.3. Substantive elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark 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 Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, the Complainants must first establish that there is a trademark or service mark in which they have rights. The Complainants have clearly established that there are trademarks in which the Complainants have rights. The Complainants’ FACEBOOK, INSTAGRAM, INSTA, WHATSAPP, and OCULUS trademarks have been registered and used in connection to their social networking, communication, and technology products and services.
All of the Disputed Domain Names either:
i. incorporate the Complainants’ trademarks in their entirety, merely adding non-distinctive suffixes and/or prefixes (namely “download”, “likebutton”, “gb”, “grow”, “lazadax”, “my”, “photos”, “tai”, “java”, “chat”, “hack”, “phone”, “mensagens”, “mp3”, “matome”, “omni”, “web”, and “upgrade”); or
ii. are deliberate misspellings of the Complainants’ trademarks adding or omitting a single letter (namely in “faceboo”, “ninstagram”, “whatsappp”, and “instagra”); or
iii. are identical to one of the Complaints’ marks (namely <instagram.me>).
As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the Disputed Domain Names, the additions of other generic terms would not prevent a finding of confusing similarity. The Panel is therefore of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168).
Additionally, the addition or omission of a single letter to or from the Complainants’ trademarks does not significantly affect the appearance or pronunciation of Disputed Domain Names. This practice is commonly referred to as “typosquatting” and creates virtually an identical and/or confusingly similar domain name to the Complainant’s trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).
Additionally, it is well established that hyphens and the top-level domains may be disregarded when considering whether the Disputed Domain Names are confusingly similar to the trademarks in which the Complainants have rights.
Accordingly, the Panel finds all of the Disputed Domain Names to be confusingly similar to the Complainants’ FACEBOOK, INSTAGRAM, INSTA, WHATSAPP, or OCULUS trademarks and the Complainants have thus made out the first of the three elements of the Policy that they must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
As established by previous UDRP panels, it is sufficient for the Complainants to make a prima facie showing that the Respondents have no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondents (seesection 2.1 of the WIPO Overview 3.0 ).
The Panel notes that the Respondents have not apparently been commonly known by the Disputed Domain Names and that the Respondents do not seem to have acquired trademark or service mark rights. According to the WhoIs records connected to the Disputed Domain Names, the Respondents are “Jurgen Neeme” and “Jay Neeme”. The Respondents’ use and registration of the Disputed Domain Names was not authorized by the Complainants. There are no indications that a connection between the Complainants and the Respondents existed.
Moreover, the Panel is of the opinion that the Respondents are not making a legitimate noncommercial or fair use of the Disputed Domain Names. All of the Disputed Domain Names are used by the Respondents either:
i. to (dynamically) redirect to a website displaying fraudulent news articles about an apparent Bitcoin scheme. The websites connected to these Disputed Domain Names try to convince Internet users to provide their personal information and deposit a certain amount of money to participate in this scheme; or
ii. to resolve to websites displaying sponsored PPC links, some of which are referring to the Complainants or their competitors.
UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondents (see section 2.13 of the WIPO Overview 3.0). The fraudulent news articles essentially incorporate information and links referring to websites connected to fraudulent activities, notably Bitcoin schemes. Evidently, such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Names.
Using a domain name to host a page comprising PPC links constitutes a very minimal use of the Disputed Domain Name. Nevertheless, Panels have recognized that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark” (see section 2.9 of the WIPO Overview 3.0). However, in the case at hand, all of the Disputed Domain Names resolving to parking pages displaying PPC links (i) incorporate and refer to the distinctive trademarks of the Complainants and (ii) risk misleading Internet users and compete with or capitalize on the reputation and goodwill of the Complainants’ trademarks. This cannot be considered as fair use of the Disputed Domain Names.
The Respondents had the opportunity to assert and explain their purported rights or legitimate interests but did not do so.
Therefore, the Panel finds that the Complainants have established that the Respondents have no rights or legitimate interests in the Disputed Domain Names. In light of the above, the Complainants succeed on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
The Respondents have either incorporated the Complainants’ FACEBOOK, INSTAGRAM, INSTA, WHATSAPP, or OCULUS trademarks in their entirety in the Disputed Domain Names or registered Disputed Domain Names which are deliberate misspellings of the Complainants’ trademarks. Additionally, most of the Disputed Domain Names are used to resolve to websites displaying PPC links expressly referring to the Complainants. It is therefore inconceivable that the Respondents were unaware of the Complainants and their trademark rights when they registered the Disputed Domain Names. The Panel therefore finds that the Respondents’ awareness of the Complainants’ trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).
In the present case, the Panel is of the opinion that the Complainants’ trademarks have a strong reputation and are widely known throughout the world, including Estonia where the Respondents are supposedly residing. This makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by the Respondents. It is clear that the Respondents registered the Disputed Domain Names with the intent to profit in some fashion from or otherwise exploit the Complainants’ trademarks either through (i) fraudulent activities, (ii) PPC revenue, or (iii) the sale of the Disputed Domain names to the Complainants or their competitors. As such, the Respondents engaged in a clear pattern of abusive registrations that also prevent the Complainants from reflecting their trademarks in the Disputed Domain Names (see section 3.1.1 and section 3.1.2 of the WIPO Overview 3.0).
By redirecting various Disputed Domain Names to fraudulent websites displaying fraudulent news articles aimed at convincing Internet users to fill in their personal information and deposit an amount of money, the Respondents clearly intended to profit from user confusion with the Complainants and their trademarks. Such behaviour is manifestly considered evidence of bad faith (see section 3.1.4 of the WIPO Overview 3.0).
For the other Disputed Domain names, the sponsored PPC links indicate that the Disputed Domain Names were registered to target the Complainants’ business and their trademarks. Website content targeting the Complainants’ trademarks, e.g., through links to the Complainants and/or their competitors, may indicate that the Respondents’ intent in registering the Disputed Domain Name was in fact to profit in some fashion from, or otherwise exploit, the Complainants’ trademarks. While the intention to earn click-through-revenue may not be in itself illegitimate, the Panel finds that the use of domain names that are confusingly similar to well-known trademarks to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623). The fact that the PPC links are automatically generated by a third party, namely the Registrar, cannot discharge the Respondents of any responsibility for the content appearing on the websites connected to the Disputed Domain Names under their control (see section 3.5 of the WIPO Overview 3.0).
The Panel further holds that for the Disputed Domain Names <faceboo.co>, <ninstagram.com>, <whatsappp.club>, and <instagra.co> the addition or omission of a single letter in the relevant trademarks is a form of typosquatting which is further evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).
Additionally, the fact that all the Disputed Domain Names are being offered for sale at “www.uniregistry.com” for the same exact amount of 4,960 USD evidences that the Respondents have likely registered the Disputed Domain Names primarily for the purpose of selling them to the Complainants or their competitors for valuable consideration in excess of his documented out-of-pocket costs incurred at the time of registration, further evidencing bad faith.
Finally, in multiple previous decisions under the Policy, the Respondent, Jurgen Neeme, has been found to have made bad faith registrations and use of domain names that were identical or confusingly similar to known trademarks (see, e.g., Verizon Trademark Services LLC v. Juergen Neeme, TheDomain.io, WIPO Case No. D2018-1125). The Panel finds that this pattern of conduct evidences bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that all of the Disputed Domain Names were registered and are being used in bad faith. In light of the above, the Complainants also succeed on the third and last element 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 Names:
<faceboo.co>, <facebook-hack.com>, <facebooklikebutton.co>, <facebookmensagens.com>, <facebook-mp3.com>, and <taifacebookjava.xyz> be transferred to the First Complainant, Facebook Inc; <instagra.co>, <instagrammatome.site>, <instagram.me>, <instagrow.co>, <lazadaxinstagram.store>, <myinstagramphotos.site>, and <ninstagram.com> be transferred to the Second Complainant, Instagram LLC; <downloadwhatsapp.info>, <gbwhatsapp.me>, <gbwhatsapp.website>, <whatsapp-chat.biz>, <whatsapphack.net>, <whatsappp.club>, <whatsapp-phone.info>, <whatsappupgrade.co>, and <whatsappweb.online> be transferred to the Third Complainant, WhatsApp Inc; and <omnioculus.com> be transferred to the Fourth Complainant, Facebook Technologies LLC.
Flip Jan Claude Petillion
Sole Panelist
Date: September 4, 2019
1 The Panel notes that 6 out of the 23 Disputed Domain Names are registered under the country-code top-level-domains .co and .me. However, as the applicable dispute resolution policy for .co and .me domain name disputes is the Uniform Domain-Name Dispute Resolution Policy (UDRP), the Panel finds UDRP precedent to be relevant to this case.