WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc., Instagram, LLC v. John Obeye
Case No. D2017-2106
1. The Parties
The Complainants are Facebook, Inc. and Instagram, LLC of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is John Obeye of Prague, Czech Republic.
2. The Domain Names and Registrar
The disputed domain names <accessfacebookfromschool.com>, <finstagram.com>, <instagraom.com> and <ssinstagram.com> are registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2017. On October 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2017.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 8, 2017. 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 Complainant is Facebook Inc and Instagram, LLC; both United States corporations with principal place of business in California, United States.
The first Complainant, Facebook, Inc., is one of the world's leading providers of online networking services. Founded in 2004, Facebook allows Internetusers to stay connected with friends and family, and to share information mainly via its website available at <facebook.com> since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with a million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010 and 1 billion users worldwide by September 2012. At June 2017 Facebook had over 2 billion monthly active users and 1.32 billion daily active users on average worldwide.
Acquired by Facebook in April 2012, Instagram is a world-renowned leading online photo and video sharing social networking application. Since it was launched on October 6, 2010, Instagram rapidly developed considerable goodwill and renown worldwide, with 100,000 users in only one week, 1 million registered users in only 2 months and over 10 million registered users in less than a year after it was launched.
The Complainant states it is the owner of numerous domain names consisting of or including the term "Facbook" and "Instagram". The Complainant states it is the owner of several trademarks consisting of or containing the word "facebook" and "instagram" and provides evidence to support such statement (e.g., European Union trademark FACEBOOK registered under no. 005585518 as of May 25, 2011; International trademark INSTAGRAM registered under no. 1129314 as of March 15, 2012).
Respondent registered the disputed domain names as follows:
- <accessfacebookfromschool.com> on September 4, 2014;
- <instagraom.com> on June 14, 2015;
- <finstagram.com> on September 4, 2014;
- <ssinstagram.com> on September 5, 2013.
At the date of the Complaint, the disputed domain names redirect Internet users to parking pages displaying sponsored links.
5. Parties' Contentions
The Complainant argues that the disputed domain names are identical or confusingly similar to the Complainant's trademarks. The disputed domain name <accesfacebookfromschool.com> identically reproduces the Complainant's FACEBOOK trademark, with the addition of the descriptive terms "access" and "fromschool" under the generic Top-Level Domain ("gTLD") ".com". The remaining disputed domain names consist of common or obvious misspelling or typos of the Complainant's INSTAGRAM trademark. The only difference between the disputed domain names and the Complainant's trademark is the mere addition of the letters "o", "f" and "ss" under the gTLD ".com".
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has been otherwise allowed by the Complainant to make any use of the Complainant's trademarks. According to the Complainant case, the Respondent cannot assert that, prior to any notice of this dispute, it was using, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are pointing to parking pages containing sponsored listings targeting the Complainant's trademark. The Respondent cannot conceivably assert it is commonly known by the Complainant's trademarks given the Complainant's notoriety and the fact that the terms "Facbook" and "Instagram" are exclusively associated with the Complainant. The Respondent cannot assert that he made or is currently making a legitimate noncommercial or fair use of the disputed domain names since the disputed domain names are pointing to parking websites that are clearly commercial in nature.
The Complainant contends that it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant's rights at the time of the registration of the disputed domain names in light of the highly distinctive character of FACEBOOK and INSTAGRAM. In addition, the fact that the Respondent registered domain names that are confusingly similar to the Complainant's INSTAGRAM trademark beginning in 2013, at a time Instagram has reached 150 million monthly active users, is clearly not a coincidence but rather a strong indication that the Respondent was aware of the Complainant's rights at the time of registration, seeking thus to profit from popularity of the INSTAGRAM trademark. Moreover, the disputed domain name <instagraom.com> was previously listed for sale on the Afternic website for USD 3,000 which demonstrates that the Respondent registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The Respondent is currently using the disputed domain names to resolve to parking pages displaying pay-per-click links targeting the Complainant's trademarks which amounts to bad faith use. The fact that the websites associated with the disputed domain names <finstagram.com> and <ssinstagram.com> display a disclaimer is irrelevant as the Respondent is responsible for the content appearing on the website associated with that domain name, regardless of whether the sponsored links are automatically generated or not. The Respondent's pattern of abusive domain name registrations and finding of bad faith in previous domain name proceeding against the Respondent, is also additional strong evidence of the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The Complaint was submitted in English. The Registrar transmitted that the language of the registration agreement is Czech and English. When asked for clarification by the Center on whether the language of the registration agreement is English or Czech, the Registrar confirmed that English language can be used. In light of the mentioned confirmation, the Panel considers that English language should be the language of the proceedings.
The Panel notes that even in absence of such confirmation from the Registrar, the Complainants have requested the proceedings to be in English for reason, inter alia, (i) that the disputed domain names have been registered under the ".com" generic extension, (ii) the disputed domain names identically reproduce or consist of a misspelling of the Complainant's FACEBOOK and INSTAGRAM trademarks, which are highly distinctive terms in English, (iii) the domain name <accessfacebookfromschool.com> includes English words and the content of the website to which the other disputed domain names resolve are in English and therefore the Respondent is targeting English speakers, (iv) it would be disproportionate to require the Complainant not to submit the Complaint in English as this would result in additional expense and unnecessary delay for the Complainant for translation. In terms of paragraph 11 of the Rules, in the absence of an agreement between the parties or otherwise specified in the registration agreement, the administrative proceeding should be in the language of the registration agreement. Even if the language of the registration agreement was Czech, the Complainant requested the proceedings to be in English to which the Respondent did not object. The Panel accepts the arguments put forward by the Complainants for which English should be language of the proceedings.
6.2. Consolidation of the Proceedings
The Complainants have jointly filed the Complaint and have submitted a request for consolidation of their dispute. The Complainants have argued that Instagram, LLC is a wholly owned subsidiary of Facebook Inc., and that they have common legal interest in the trademarks reproduced in the disputed domain names in order to file a joint Complaint. In addition, the Complainants have argued that they are the target of common conduct by the Respondent, consisting of a pattern of identically reproducing their respective trademarks in a domain name, which affects their individual rights and interests in a similar fashion. The Complainants further contend that it would be equitable and procedurally efficient to permit consolidation of the Complaints because inter alia the substantive arguments made under each of the three elements of the Policy are common to all the disputed domain names, the Complainants are represented by a single authorized representative in these proceedings, and the relevant filings, including annexes, are not unreasonably voluminous.
Paragraph 10(e) of the Rules provides for the consolidation of multiple domain name disputes. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") reads as follows:
"Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
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."
In the case at hand the Complainants have submitted evidence that Instagram, LLC is a wholly-owned subsidiary of Facebook, Inc. In consideration of this proof and the other facts of the case put forward by the Complainants and not refuted by the Respondent, the Panel accepts the request for consolidation on the basis that all disputed domain names and the websites to which they resolve are under the common control of the Respondent and consolidation would avoid unnecessary duplication of time, effort and expense and ultimately would be fair and equitable to all parties. The Respondent did not contest the request for consolidation. For similar findings, see Fanuc Corporation v. SC Metalkid 2008 SRL and Alunăriței Liliana, WIPO Case No. DRO2016-0005; Facebook, Inc. and Instagram, LLC v. Adam Szulewski, WIPO Case No. D2016-2380; Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd / Weiwei, WIPO Case No. D2016-0409.
6.3. Substantive Issues
Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainants.
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following elements:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel must find that the Complainants have a trademark or service mark and that the disputed domain names are identical or confusingly similar to that trademark or service mark for the Complainants to succeed.
Here, the Complainants proved trademark rights over FACEBOOK trademark (registered under no. 005585518 as of May 25, 2011) and over INSTAGRAM trademark (registered under no. 1129314 as of March 15, 2012).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names to the trademarks in which the Complainants hold rights.
Here the disputed domain name <accessfacebookfromschool.com> includes three generic words "access", "from", "school", in addition to the FACEBOOK trademark.
Numerous UDRP decisions have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617).
The addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw, WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the complainant's trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275; Société Air France v. R Blue, WIPO Case No. D2005-0290.
In this case, apart from the generic Top-Level Domain ("gTLD"), the disputed domain name <accessfacebookfromschool.com> consists of the Complainant's trademark FACEBOOK and the terms "access", "from" and "school". The Panel agrees with the opinion expressed by previous UDRP panels that generic terms such as "access", "from" and "school", and the gTLD ".com" does not avoid a finding of confusing similarity between the disputed domain name and the trademark (see IM Production v. Whoisguard Protected / Whoisguard Inc. / Tina Fusa, WIPO Case No. D2015-1532; IM Production v. Linyuanzhi, WIPO Case No. D2013-0656, IM Production v. he le, WIPO Case No. D2013-0595).
The disputed domain names <instagraom.com>, <finstagram.com>, <ssinstagram.com> consist of common or obvious misspelling of the Complainant's INSTAGRAM trademark.
The trademark INSTAGRAM has a high degree of distinctiveness of the Complainant's activity (see Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736). A domain name which differs by one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (the only difference between the domain name and the trademark is the purposeful misspelling, created by the addition of a letter "h"); Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (closely misspelled domain name satisfies "confusingly similar" factor); United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (the domain name differs from the mark merely by the addition of the letter "l" in the domain name, and such addition does not prevent the domain name from being considered virtually identical or confusingly similar to the Complainant's mark); Alta Vista Co. v. Saeid Yomtobian, WIPO Case No. D2000-0937 (the domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (the domain name <0xygen.com>, spelled with a zero rather than the letter "o", is confusingly similar to trademark OXYGEN); The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 (the disputed domain names comprise common misspellings of the term "Nasdaq", the only difference being in each case the lack of only one letter; quite clearly, the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant's website, a practice dubbed "typosquatting" and condemned in a number of UDRP panel decisions).
It is well accepted by UDRP panels that a gTLD, such as ".com", is typically ignored when assessing identity or confusing similarity between a trademark and a domain name.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain names are confusingly similar to the trademarks of the Complainants. See also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trademark 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 trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: "[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainants have established that it holds rights over the trademarks FACEBOOK and INSTAGRAM, and claim that the Respondent has not provided any evidence of its use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the name "facebook" or "instagram". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
According to the evidence put forward by the Complainant, the disputed domain names redirect Internet traffic to a sponsored listings website. This does not represent bona fide offering of goods or services that would demonstrate rights or legitimate interests in the disputed domain name as required by the Policy (section 2.9 of the WIPO Overview 3.0).
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain names in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
"(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location."
It results from the Complainants' undisputed allegations and evidence that Facebook, Inc. was established in 2004 and has worldwide goodwill and renown, including in the Czech Republic where the Respondent is located and where the main website is ranked as the 5th most visited website. Also, according to undisputed allegation by the Complainant, Instagram is a world-renowned leading online photo and video sharing networking application, being the 7th most developed app in the Czech Republic. At the time when the disputed domain names were registered, the Complainants' trademarks have already been widely known worldwide. Therefore, the Panel considers that when the Respondent registered the disputed domain names knew that those domain names include the FACEBOOK and INSTAGRAM trademarks of the Complainants. In this Panel's view, such awareness with the other circumstances of the case amounts to registration in bad faith. For a similar finding see Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950 ("Therefore, it is the view of this Panel that the Respondent – when registering the disputed domain name – knew that the disputed domain name included the Complainant's FACEBOOK trademarks. Registration of this disputed domain name in the absence of rights or legitimate interests, with awareness of the reputed FACEBOOK trademark and in combination with a descriptive term ("work"), which is linked to one of the Complainant's businesses (i.e., "Facebook at Work"), in this case amounts to registration in bad faith."). For a finding of well-known character of FACEBOOK see also Facebook, Inc. v. Cetinje s.r.o., WIPO Case No. D2014-1070. For a finding of well-known character of INSTAGRAM see Instagram, LLC v. Instagram ??????, supra.
Additionally, in what concerns the disputed domain names that include INSTAGRAM trademark, the Panel agrees with the Complainant's argument that Respondent registering domain names that are confusingly similar (based on typographical errors) to its trademark is clearly not a coincidence but rather a strong indication that the Respondent was undoubtedly aware of the complainant's rights at the time of registration and deliberately chose to register the disputed domain names seeking to profit from the popularity of the Complainant's INSTAGRAM trademark.
As regards the use of the disputed domain names, they display terms such as "Facebook login page", "Facebook homepage", "Instagram", "Instagram followers", etc. When clicking on such links, Internet users are redirected to third party commercial websites. In addition, the websites associated with the disputed domain names <finstagram.com> and <ssinstagram.com> both display the following disclaimer at the bottom of the page:
"The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)".
It appears that the intention is that the webpage includes sponsored links where presumably Internet users could click on an advertisement which would take them to a webpage where services or products are offered.
The Panel agreed with similar findings with regard to the above disclaimer, that such a disclaimer is not normally sufficient for a respondent to eschew responsibility for the bad-faith use of a domain name in circumstances such as these. "Whether the sponsored listings displayed at the disputed domain name are in fact generated by a third-party is largely immaterial. As the registrant of record, it is ultimately the Respondent's responsibility to ensure that the content at the disputed domain name does not make illegitimate use of the trademark rights of third-parties such as those of the Complainant." See Aldi Stores Limited, Aldi GmbH & Co. KG v. Matt Bonner, WIPO Case No. D2015-0783.
In such circumstances, it can be inferred that the intention of the Respondent is to gain financially by making use of the disputed domain names in this way, or allow a third party to do so, by generating a misleading impression of some connection between the disputed domain names and the Complainant. See, for a similar finding, ALDI GmbH & Co. KG v. bestview GmbH netsolutions, WIPO Case No. D2011-1383.
Additional factors retained by the Panel are (i) the fact that the Respondent appears to have registered a number of domain names associated with well-known trademarks, for which the Complainant provided evidence not refuted by the Respondent, (ii) the Respondent has been involved as a respondent in another domain name disputed proceeding, (iii) both the trademark FACEBOOK and the trademark INSTAGRAM are highly distinctive and well known around the world, (iv) most of the disputed domain names are confusingly similar based on typographical errors to the Complainant's INSTAGRAM trademark. Also, according to evidence by the Complainant not refuted by the Respondent the disputed domain name <instagraom.com> was previously listed for sale on the Afternic website for USD 3,000, which presumably demonstrated that the Respondent registered the said domain name primarily for the purpose of selling it for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
Given the above circumstances, the Panel concludes that the disputed domain names were registered and used in bad faith.
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 <accessfacebookfromschool.com> is transferred to the Complainant Facebook, Inc., and the disputed domain names <finstagram.com>, <instagraom.com> and <ssinstagram.com> be transferred to the Complainant Instagram, Inc.
Date: December 22, 2017