WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. and Instagram, LLC v. C W / c w, c w
Case No. D2018-1159
1. The Parties
The Complainants are Facebook, Inc. ("Facebook") and Instagram, LLC ("Instagram") of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.1
The Respondents are C W / c w, c w of Houston, Texas, United States (hereinafter referred to as "the Respondent").
2. The Domain Names and Registrars
The disputed domain names <facebookcall.com> and <facebookvideocall.com> (the "Disputed Domain Names") are registered with the Registrar, GoDaddy.com, LLC.
The disputed domain name <instagramdirect.com> (the "Disputed Domain Name") is registered with the Registrar, NameSilo, LLC.
Hereinafter, <facebookcall.com>, <facebookvideocall.com>, and <instagramdirect.com> will be referred to collectively as the "Disputed Domain Names".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 24, 2018. On May 24, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On the same date, each Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 4, 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 Complainant Facebook is a provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its official website located at "www.facebook.com". Since its launch in 2004, the Complainant rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 5.5 million in December 2005, 12 million in December 2006, 50 million in October 2007, 100 million in August 2008, 500 million in July 2010, and 1 billion users worldwide by September 2012. As of the fourth quarter of 2017, the Complainant has approximately 2.07 billion monthly active users and 1.37 billion daily active users on average worldwide. Thus, the Complainant enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services.
The Complainant Instagram, a wholly-owned subsidiary of the Complainant Facebook, 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 users in only 2 months, and over 10 million users by September 2011, less than a year after it was launched. Acquired by Facebook in April 2012, Instagram reached over 100 million monthly active users by February 2013, 150 million active users by September 2013, and 400 million users by September 2015. Currently, Instagram has over 800 million monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. It is one of the fastest growing social media in the world and has consistently ranked among the top applications for mobile devices.
The Complainant owns numerous trademark registrations in many jurisdictions throughout the world for FACEBOOK and INSTAGRAM. Such trademark registrations include, but are not limited to, the following: FACEBOOK, United States Registration No. 3,041,791, registered on January 10, 2006, with a first use in commerce in 2004; FACEBOOK, United States Registration No. 3,122,052, registered on July 25, 2006, with a first use in commerce in 2004; INSTAGRAM, United States Registration No. 4,146,057, registered on May 22, 2012, with a first use in commerce on October 6, 2010; INSTAGRAM, United States Registration No. 4,170,675, registered on July 10, 2012, with a first use in commerce on October 6, 2010; FACEBOOK, International Registration No. 1232015, registered on December 15, 2014; and INSTAGRAM, International Registration No. 1129314, registered on March 15, 2012 (hereinafter referred to as the "FACEBOOK and INSTRAGRAM Marks").
In addition to its official domain names, <facebook.com> and <instagram.com>, the Complainant is the owner of numerous domain names consisting of or including the FACEBOOK and INSTAGRAM Marks. Such domain names include, but are not limited to, <facebook.org> and <instagram.net>, as well as domain names followed by country code extensions.
The Disputed Domain Names were registered by the Respondent as follows: <facebookcall.com> was registered on June 3, 2015; <facebookvideocall.com> was registered on June 8, 2015; and <instagramdirect.com> was registered on March 2, 2015.
The Disputed Domain Names resolve to parking pages with sponsored pay-per-click links targeting the FACEBOOK and INSTAGRAM Marks, displaying inter alia the terms "Facebook Call", "Facebook Video Call", "Instagram login", "Instagram Download" and "Instagram Sign Up". In addition, the pages all contain a link stating "DOMAIN IS FOR SALE. EMAIL: […]@gmail.com". Upon clicking on this link, Internet users are redirected to a webpage where they are invited to make an offer to acquire the Disputed Domain Names.
On March 13, 2018, the Complainant sent a cease and desist letter to the Respondent by email asserting the Complainant's trademark rights and asking the Respondent to transfer the Disputed Domain Names to the Complainant, but the Respondent did not reply.
5. Parties' Contentions
The Complainant contends that:
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
- The Disputed Domain Names were registered and are being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Names <facebookvideocall.com> and <facebookvideocall.com> from the Respondent to the Complainant Facebook and the transfer of the Disputed Domain Name <instagramdirect.com> from the Respondent to the Complainant Instagram, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant submitted a request for consolidation in this proceeding. In the case of multiple complainants filing against a single respondent, paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. 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". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.1. Where a complaint is filed against multiple respondents, panels look at whether "(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario". WIPO Overview 3.0, section 4.11.2. The Panel submits that the criteria set out above are met and thus, accepts consolidation in the present case.
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):
(i) The Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to that trademark or trademarks.
It is uncontroverted that the Complainant has established rights in the FACEBOOK and INSTAGRAM Marks based on longstanding use as well as its numerous trademark registrations for the FACEBOOK and INSTAGRAM Marks in the United States and other jurisdictions. The Disputed Domain Name <facebookcall.com> consists of the FACEBOOK Mark in its entirety, followed by the generic or descriptive term "call" and the generic Top-Level Domain ("gTLD") ".com". The Disputed Domain Name <facebookvideocall.com> consists of the FACEBOOK Mark followed by the generic or descriptive term "videocall" and the gTLD ".com". The Disputed Domain Name <instagramdirect.com> consists of the INSTAGRAM Mark followed by the generic or descriptive term "direct" and the gTLD ".com".
The Disputed Domain Names incorporate the Complainant's FACEBOOK and INSTAGRAM Marks in their entirety. Prior UDRP panels have held that "when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy." See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Further, the addition of the generic or descriptive terms "call", "videocall", and "direct" in the Disputed Domain Names does nothing to minimize the risk of confusion. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element". See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, it is permissible for the Panel to ignore the gTLD, as it is viewed as a standard registration requirement. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic term. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
The Panel finds that the Disputed Domain Names are confusingly similar to trademarks in which the Complainant has rights, and thus, the Complainant has satisfied the first prong of the Policy.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant's FACEBOOK or INSTAGRAM Marks. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. The Respondent cannot assert that it was using, or had made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Rather, the Respondent is using the Disputed Domain Names to redirect to webpages that contain sponsored pay-per-click links that are commercial in nature. This strongly suggests that the Respondent's intention is to exploit the goodwill and reputation attached to the Complainant's FACEBOOK and INSTAGRAM Marks for its own or a third party's financial gain.
Moreover, the Respondent's registration and use of some of the Disputed Domain Names to resolve to websites that offer the Disputed Domain Names for sale is another indication that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Names and that the Complainant has satisfied the second prong of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent attempts to attract, for commercial gain, Internet users to its parking pages by creating a likelihood of confusion with the FACEBOOK and INSTAGRAM Marks. The Panel finds that the Respondent registered and is using the Disputed Domain Names in bad faith to attract customers by using domain names that are confusingly similar to the FACEBOOK and INSTAGRAM Marks.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant's FACEBOOK and INSTAGRAM Marks prior to registering the Disputed Domain Names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Names after the Complainant first used the FACEBOOK and INSTAGRAM Marks and after the Complainant established fame and notoriety worldwide.
The continuous and public use of the FACEBOOK and INSTRAGRAM Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would interfere with the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Names indicates that the Respondent acted in bad faith.
Third, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be an indication of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Based on the circumstances here, where the Disputed Domain Names resolve to parking pages containing pay-per-click sponsored links based on the trademark value of the domain names, "the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting." See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing pages not legitimate where sponsored links are based on the trademark value of the domain name). It is well established that the use of parking pages in this manner is evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Moreover the Respondent's offer to sell the Disputed Domain Names, under the circumstances, is also evidence of the Respondent's bad faith registration and use under paragraph 4(b) of the Policy.
Finally, the Respondent's bad faith can be inferred from its lack of reply to the cease and desist letter sent by the Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
The Panel concludes that the Complainant has made out its case that the Disputed Domain Names were registered and are being used in bad faith, and as such, the Complainant has satisfied the third prong of the Policy.
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 <facebookcall.com> and <facebookvideocall.com> be transferred to Facebook, Inc. and that the Disputed Domain Name <instagramdirect.com> be transferred to Instagram, LLC.
Lynda M. Braun
Date: July 6, 2018
1 Instagram, a wholly-owned subsidiary of Facebook, together with Facebook, will hereinafter collectively be referred to as the "Complainant".