WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Linyanxiao
Case No. D2018-1089
1. The Parties
The Complainants are Facebook, Inc. of Menlo Park, California, United States of America (“USA”); Instagram, LLC of Menlo Park, California, USA; WhatsApp Inc of Menlo Park, California, USA, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Linyanxiao of Guangzhou, Guangdong, China.
2. The Domain Names and Registrar
The disputed domain names <facebookw.com>, <instagramlogin.com>, <instagranm.com>, <whatsaap.net> and <whatssap.com> are registered with 22net, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English and Chinese with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2018, 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. On May 18, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on June 25, 2018. 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 first Complainant Facebook, Inc. (“the first Complainant”) states in the Complaint that it is the world’s leading provider of online social networking services. Since its launch in 2004, it has developed considerable renown and goodwill worldwide, with one million active users by the end of 2004, 100 million users in August 2008, and 1 billion users by September 2012. Today, the first Complainant has approximately 2.13 billion monthly active users. Its website at “www.facebook.com” is currently ranked as the third most-visited website in the world. In September 2017 the Facebook brand ranked eighth in Interbrand’s Best Global Brands report.
The second Complainant Instagram, LLC (“the second Complainant”) states that it is a world-renowned online photo and video-sharing social networking application. It was launched in October 2010. It rapidly developed and by September 2011, it had over 10 million registered users. The second Complainant was acquired by the first Complainant in April 2012. It currently has over 800 million monthly active users and 500 million daily active users. Instagram is the fourth most-downloaded application in China for Google play phones and is available in over 36 languages, including in Chinese. The website at “www.instagram.com” is ranked the 15th most-visited website in the world.
The third Complainant WhatsApp Inc (“the third Complainant”) is a provider of one of the world’s most popular mobile messaging applications. It was founded in 2009 and acquired by the first Complainant in October 2014. Today, the third Complainant has over 1.3 billion monthly active users worldwide, and consistently ranked amongst Apple iTunes’s 25 most popular free mobile applications.
The Complainants are the owners of numerous domain names consisting of or incorporating the terms “facebook”, “instagram” and “whatsapp”, including <facebook.com>, <facebook.org>, <instagram.com>, <instagram.de>, <whatsapp.com>, and <whatsapp.biz>.
Substantial investments have been made by the Complainants to develop a strong presence online by being active on the different social media forums available, including Twitter, LinkedIn, YouTube and Google +.
The Complainants own numerous trade mark registrations for FACEBOOK, INSTAGRAM and WHATSAPP in many jurisdictions throughout the world, including in China. These include Chinese Trade Mark Registration No. 5251162 for FACEBOOK (registered on September 21, 2009), International Registration No. 10755094 for FACEBOOK (figurative) (registered on July 16, 2010); Chinese Trade Mark Registration No. 10614690 and International Registration No. 1129314 for INSTAGRAM (registered on June 14, 2013 and March 15, 2012, respectively); and Chinese Trade Mark Registration No. 21470703A and International Registration No. 1085538 for WHATSAPP (registered on December 21, 2017 and May 24, 2011, respectively). The cited International registrations all include designations of China.
The disputed domain name <facebookw.com> was registered on December 12, 2013; <instagramlogin.com> on November 28, 2011; <instgranm.com> on February 3, 2011; <whatsaap.net> on June 7, 2012; and <whatssap.com> on April 14, 2013.
The disputed domain names <whatsaap.net> and <whatssap.com> resolve to error pages; the disputed domain names <facebookw.com>, <instagramlogin.com> and <instgranm.com> lead to parking pages displaying sponsored links targeting the Complainants’ trade marks. The links point to third-party commercial websites. The websites associated with the disputed domain names <instagramlogin.com> and <instgranm.com> contain a link to another website where it is possible to buy these domain names after making an offer.
The Respondent’s name and email address are associated with numerous domain names which incorporate well-known trade marks of third parties, e.g., <citiabnk.com>, <googlemas.com>, <mnordstrom.com> and <walmartusa.com>. The Respondent was also previously the registrant for the domain names <facebooklogon.com>, <faceboo.org> and <facebookxxx.com>, before it went under a privacy shield. The Complainant cited six earlier UDRP cases in which the Respondent has been a named respondent.
5. Parties’ Contentions
The Complainants have rights in the respective trade marks FACEBOOK, INSTAGRAM and WHATSAPP. The disputed domain names are identical or confusingly similar to the Complainants’ trade marks.
The disputed domain names <facebookw.com> and <instagranm.com> identically reproduce the first and second Complainants’ FACEBOOK and INSTAGRAM trade marks, with the addition of the letters “w” and “n”. The incorporation in whole of the Complainants’ respective marks is sufficient to establish identity or confusing similarity for the purposes of the Policy.
The disputed domain name <instagramlogin.com> reproduces the INSTAGRAM trade mark with the addition of the term “login”. Such an addition does not distinguish the disputed domain name in any material way the confusing similarity with the second Complainant’s INSTAGRAM trade mark as it is strongly related to the second Complainant and its activities.
The disputed domain names <whatsaap.net> and <whatssap.com> consist of common or obvious mis-spellings of the third Complainant’s WHATSAPP trade mark. The only difference between these two disputed domain names and the third Complainant’s WHATSAPP trade mark is an omission of the letter “p” and the addition of the letters of “a” and “s”. These common or obvious mis-spellings of a trade mark are insufficient to distinguish the disputed domain names from the third Complainant’s trade mark.
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 Complainants, nor has it been otherwise allowed by the Complainants to make any use of the Complainants’ trade marks. The Respondent cannot assert that it has been 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 <facebookw.com>, <instagranm.com> and <instagramlogin.com> point to parking pages containing sponsored links targeting the Complainants’ INSTAGRAM, FACEBOOK and WHATSAPP trade marks. Such use cannot be considered a bona fide offering of goods or services. The Respondent is obviously trying to unduly profit from the Complainants’ goodwill for its own financial gain. Neither can there be a bona fide offering of goods or services where a disputed domain name consists of an obvious mis-spelling of a complainant’s trade mark. The Respondent is in no position to assert that it is commonly known by the Complainants’ trade marks, given the fame of the Complainants and the fact that the trade marks FACEBOOK, INSTAGRAM and WHATSAPP are exclusively associated with the Complainants.
The disputed domain names were registered and are being used in bad faith. The Complainants’ FACEBOOK, INSTAGRAM and WHATSAPP marks are highly distinctive and well-known, including in China where the Respondent is located. These marks have been continuously and extensively used for many years, and rapidly acquired considerable goodwill and renown worldwide. It would therefore be inconceivable that the Respondent would be able to argue that it did not have knowledge of the Complainants’ rights at the time of registration of the disputed domain names. The fact that Facebook is not accessible in China is irrelevant. The availability of the disputed domain names <instagramlogin.com> and <instagranm.com> for sale is a clear demonstration that the Respondent registered the disputed domain names primarily for the purpose of selling them for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names.
The Respondent registered the disputed domain names in order to prevent the Complainants from reflecting their trade marks in a corresponding domain name and has engaged in a pattern of such conduct. The Respondent sought deliberately to take advantage of the Complainants’ rights and goodwill in the trade marks FACEBOOK, INSTAGRAM and WHATSAPP by attracting, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation or endorsement of the websites. The Respondent’s use of the disputed domain names <facebookw.com>, <instagranm.com> and <instagramlogin.com> to resolve to parking pages displaying pay-per-click links is undoubtedly to obtain financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issue: Request for Consolidation
The Complainants request a consolidation of the dispute. Paragraph 10(e) of the Rules grants panels the power to consolidate multiple domain name disputes and paragraph 3(c) provides that a complaint may relate to more than one domain name. The Complainants point out that although the Policy and the Rules do not expressly provide for the consolidation of multiple complainants, neither is it prohibited. The Complainants support their request on the bases that:
(i) they have a common legal interest in the trade mark rights on which the Complaint is based as the second Complainant and the third Complainant are wholly-owned subsidiaries of the first Complainant; and
(ii) they are the target of common conduct by the Respondent, consisting of a pattern of identically reproducing their respective trade marks in a domain name;
(iii) it would be equitably and procedurally efficient to permit a consolidation of the complaints.
The above-mentioned bases are reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”) at section 4.11.
Applying the considerations of “common legal interest”, “common conduct by the respondent” and what would be “equitable and procedurally efficient”, the Panel agrees that the consolidation of the dispute involving the three Complainants would be appropriate in this case since they are related entities, two of them being wholly owned by the first Complainant, and the disputed domain names have been registered by the same Respondent. The Panel moreover notes that the Respondent has not filed any Response nor taken issue with the Complainants’ request for consolidation. This manner of proceeding with the dispute involving the disputed domain names would be procedurally efficient and is consistent with the aims of the Policy to resolve the domain name disputes in as efficient a manner as possible in terms of costs and time. The Panel does not perceive that the Respondent would be prejudiced if consolidation were to be ordered by the Panel.
The Panel accordingly allows the Complainants’ respective complainants against the Respondent.
6.2 Preliminary Issue: Language of the Proceeding
The Complainants request that English apply as the language of the proceeding notwithstanding that the Registration Agreement is in Chinese, the reasons being that:
i. the disputed domain names have been registered under the “.com” and “.net” generic Top-Level Domains (“gTLDs”);
ii. the disputed domain names identically reproduce or consist of a mis-spelling of the Complainants’ FACEBOOK, INSTAGRAM and WHATAPP trade marks, which are distinctive English terms;
iii. the disputed domain name <instagramlogin.com> includes the English word “login” and the content of the website to which this disputed domain name resolves is in English. It therefore means that the Respondent is likely to have a good understanding of the English language and the Respondent is targeting English speakers; and
iv. requiring the Complaint to be submitted in Chinese would result in additional expense and unnecessary delay for the Complainant as translations would have to be prepared.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In view of the mandate for UDRP panels to ensure that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules) and of what appears to be the case, that the Respondent is sufficiently familiar with the English language, the Panel determines that it would be appropriate for English to be the language of the proceeding.
The Panel believes that the Respondent will not be prejudiced if the language of the proceeding were English. The disputed domain names in this case all comprise words and/or recognised trade marks in English (albeit a couple of which are mis-spelt). The disputed domain names <facebookw.com> and <instagramlogin.com> resolve to parking pages which reflect content entirely in English e.g., “How to Create a Website for Free”, “Facebook Login” and “Login to Instagram”. The Respondent did not at any time assert that it does not understand English. The Panel also notes that the Respondent appears to be very familiar with well-known trade marks from the USA including CITIBANK, GOOGLE, NORDSTROM and WALMART, seeing that it is the registrant of these other domain names: <citiabnk.com>, <googlemas.com>, <mnordstrom.com> and <walmartusa.com>. These are strong indications that the Respondent is able to understand English and is targeting the English-speaking section of the Internet community. On the other hand, requiring the Complainant to have English translations of the Complaint and annexes prepared would pose a time and financial burden upon the proceeding which does not appear to be merited in this case.
The Panel therefore determines that English shall be the language of the proceeding.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark rights in FACEBOOK, WHATSAPP and INSTAGRAM, all of which are well-known.
The FACEBOOK trade mark has been incorporated in its entirety in the first disputed domain name. The only difference lies in the additional letter “w” and the gTLD “.com”. It is a well-established principle that the addition of insignificant, non-distinctive elements such as the letter “w” in this case is of no effect and does not remove the confusing similarity with the Complainant’s FACEBOOK trade mark.
Applicable to the five disputed domain names is the established principle that the gTLDs “.com” and “.net” are to be disregarded since these are but technical requirements of domain names. Their inclusion in the disputed domain names is not relevant to the issue of identity or similarity under paragraph 4(a)(i) of the Policy.
The INSTAGRAM trade mark has been incorporated in its entirety in this disputed domain name and is identifiable therein. The fact that the word “login” is added to this disputed domain name does not eliminate its similarity with the second Complainant’s INSTAGRAM trade mark as “login” is a descriptive and non-distinctive component of this disputed domain name. It has been held in numerous UDRP cases that a domain name which wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of other descriptive words to such marks.
<instagranm.com>, <whatsaap.net> and <whatssap.com>
These disputed domain names share a common feature, namely the obvious mis-spelling of well-known marks by the addition of a letter and/or the omission of a letter. What is also common to these three disputed domain names is the fact that notwithstanding the mis-spelling, what is conveyed to Internet users is the obvious reference to the Complainants’ Instagram and WhatsApp applications. These applications are what would immediately come to mind when one looks at the three disputed domain names. Although there are mis-spellings, the Complainants’ respective trade marks are immediately identifiable. Hence, in the Panel’s view, it is patently clear that the intention of the Respondent must have been to ride off the well-established reputation of the Complainants’ WHATSAPP and INSTAGRAM trade marks whilst at the same time counting on the foreseeable and high chance of Internet users mis-typing the Complainants’ trade marks when entering the URL addresses. The same may be said of the disputed domain name <facebookw.com>.
Earlier UDRP panels have condemned the practice of “typosquatting” undertaken by many cybersquatters. The addition of a letter or omission of another letter, the substitution of one letter for another, or the re-arranging of letters forming a trade mark have not been considered sufficient to distinguish a domain name from a complainant’s trade mark. (See e.g., Instagram, LLC v. Zhou Murong, WIPO Case No. D2014-1550; and Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 wherein the panel held:
“The practice of ‘typosquatting’ has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627(finding that ‘typosquatting’”, the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark); Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713 (finding the circumstances of ‘typosquatting’” to constitute confusing similarity); Ross-Simons, Inc. v. Domain.Contact, supra (finding that disputed domain names are confusingly similar to the marks which they misspell).”
The Complainants have therefore satisfied the requirement of paragraph 4(a)(i) of the Policy in respect of the disputed domain names.
B. Rights or Legitimate Interests
Although a complainant is required under the Policy to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of UDRP panels is that the complainants are only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case in support. Thereafter, the burden moves to the respondent to establish, with evidence, showing that it has rights or legitimate interests in the domain name in dispute.
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case. There is no relationship between the Complainants and the Respondent, and there is no evidence that the Respondent is commonly known by the disputed domain names. Considering the highly distinctive nature of the Complainants’ trade marks and their extensive fame and reputation, it is not by any stretch conceivable that the Respondent would be able to claim rights to or legitimate interests in the terms “facebook”, “whatsapp” and “instagram”.
The Respondent has not denied any of the Complainants’ assertions nor brought any evidence demonstrating it has rights or legitimate interests in the disputed domain names.
In the circumstances, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the reasons mentioned in the preceding section and in view of what appears to be a pattern of conduct on the Respondent’s part, the Panel has no hesitation in concluding that the disputed domain names were registered and are being used in bad faith. In relation to the disputed domain names <instagramlogin.com> and <instagranm.com> which were made available for sale, the circumstances fall within that described in paragraph 4(b)(i) of the Policy:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;”
As regards the disputed domain names as a collective whole, the circumstances of this case smack clearly of bad faith. The opportunistic attempts to ride off the fame of the Complainants and their trade marks as well as the pattern of bad faith conduct (demonstrated by the Respondent’s registrations of other domain names incorporating the well-known marks of third parties and the Respondent’s registrations of <facebooklogon.com>, <faceboo.org> and <facebookxxx.com>) are such that there is no possible justification which would qualify the disputed domain name registrations as having been made by the Respondent in good faith. The specific targeting of the well-known trade marks of the Complainants, all being related companies) are tell-tale signs of bad faith intent, namely to profit financially and to bank on the typographical errors made by Internet users when typing the names of the domain names corresponding to the trade marks of the Complainants.
In the premises, the Panel concludes that the disputed domain names have been registered and used in bad faith.
The third element of paragraph 4(a) of the Policy has been satisfied by the Complainants.
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 <facebookw.com> be transferred to the first Complainant, the disputed domain names <instagramlogin.com> and <instagranm.com> be transferred to the second Complainant, and the disputed domain names <whatsaap.net> and <whatssap.com> be transferred to the third Complainant.
Date: July 3, 2018