WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc. and Instagram, LLC v. Domains By Proxy, LLC. / Leejau Wilson
Case No. D2021-1119
1. The Parties
The Complainants are Facebook, Inc. and Instagram, LLC, United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domains By Proxy, LLC, United States / Leejau Wilson, Azerbaijan.
2. The Domain Name and Registrar
The disputed domain name <instagram-facebook.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2021.
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 Respondent of the Complaint, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 8, 2021. 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
Instagram LLC and Facebook, Inc., in the following referred to as the Complainant, provides online social networking services and has rapidly developed considerable renown and goodwill worldwide. Its website at “www.facebook.com” has approximately 2.7 billion monthly active users and 1.82 billion daily active and its website at “www.instagram.com” has more than 1 billion monthly active users. The two websites are ranked respectively as the 7th and 25th most visited websites in the world according to information company Alexa.
The Complainant owns numerous trademark registrations to the terms INSTAGRAM and FACEBOOK in many jurisdictions throughout the world. The registrations include but are not limited to: United States Trade mark No. 3041791, FACEBOOK, registered on June 10, 2006, for services in class 35 and 38; and International Trade mark No. 1129314, INSTAGRAM, registered on March 15, 2012, for goods and services in class 9 and 42.
The Complainant is also the registrant of numerous domain names consisting of the trademarks INSTAGRAM and FACEBOOK, such as <instagram.com> and <facebook.com>.
The disputed domain name <instagram-facebook.com> was registered on July 24, 2020. The disputed domain name appears to used actively, but when you enter the disputed domain name in a browser, the access is blocked and the visitor is met with a statement such as: “Deceptive site ahead Attackers on instagram-facebook.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards).”
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. The disputed domain name incorporates the Complainant’s INSTAGRAM and FACEBOOK trademarks in their entirety with the addition of a hyphen.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its INSTAGRAM and FACEBOOK trademarks, in a domain name or otherwise. The fact that the disputed domain name is subject to a “deceptive site ahead” warning when access is attempted suggests that the Respondent may use the disputed domain name for fraudulent activities, which cannot be bona fide use, nor can it be a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Respondent cannot legitimately claim to be commonly known by the disputed domain name, or a name corresponding to the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The Complainant finally submits that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks are highly distinctive and well known throughout the world and have rapidly acquired considerable goodwill and renown worldwide. In view of this and of the registration dates of the Complainant’s trademarks, it would be inconceivable that the Respondent did not have knowledge of these trademarks at the time of registration of the disputed domain name. As evidenced, the disputed domain name resolves to a landing page warning of a deceptive site ahead and, all things considered, it seems highly likely that the disputed domain name has or will be used for fraudulent activities. Even if the disputed domain name is not being actively used this does not prevent a finding of bad faith use, in particular because there simply cannot be any actual or contemplated good faith use of the disputed domain name as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name <instagram-facebook.com> comprises the Complainant’s INSTAGRAM and FACEBOOK trademarks in their entirety, separated by a hyphen. Therefore, and since the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such is generally disregarded under confusing similarity test, the Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademarks.
The Panel thus finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademarks INSTAGRAM and FACEBOOK, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name he chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name does not resolve to a directly accessible website, since the most currently used browsers block the access to the website for security reasons. This does, however, not prevent a finding of bad faith use. As it is stated in section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.”
Noting that the disputed domain name incorporates distinctive and well-known trademarks, that no Response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <instagram-facebook.com> be transferred to the Complainant.
Date: June 25, 2021