WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook, Inc., Instagram, LLC v. Rafael Cuellar, FacebookforAnimal.cop, youpupy llc
Case No. D2021-1651
1. The Parties
Complainants are Facebook, Inc., and Instagram, LLC (referred both together as “Complainant”), United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Rafael Cuellar, FacebookforAnimal.cop, youpupy llc, United States.
2. The Domain Names and Registrars
The disputed domain names <faceandbookforanimal.com>, <faceandbookpizza.com>, <fasebocforanimal.com>, <fasebocpizza.com>, <instanride.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 12, 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 Respondent of the Complaint, and the proceedings commenced on June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 20, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 28, 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
Complainant Facebook, Inc. is an online social media service provider. Complainant has provided social networking services under the FACEBOOK trademark since 2004, and today is the world’s largest social media firm. Complainant has more than 2.7 billion active monthly users and more than 1.7 billion active daily users around the world. Complainant’s website, located at “www.facebook.com”, is one of the most visited sites in the world.
The trademark FACEBOOK is registered in numerous jurisdictions, including United States Patent & Trademark Office (“USPTO”) Reg. No. 3,041,791, registered on January 10, 2006.
There is little doubt that FACEBOOK is a famous trademark.
Complainant Instagram, Inc., owned by Facebook Inc. since 2012, is one of the world’s largest photo- and video-sharing social media platforms. Annexed to the Complaint is evidence that INSTAGRAM is one of the world’s most widely used app on mobile devices. Complainant maintains a website at “www.instagram.com”.
The Panel notes from a trademark search in public databases that the trademark INSTAGRAM is registered in numerous jurisdictions, including USPTO Reg. No. 4,146,057, registered on May 22, 2012. There is little doubt that INSTAGRAM is also a famous mark.
Complainant Instagram, Inc. also owns various registrations for the trademark INSTA, including USPTO Reg. No. 5,061,916, registered on October 18, 2016.
The Domain Names were registered on various dates between May 20, 2017 and January 5, 2020. As will be discussed below, the Panel finds that all five Domain Names were registered by the same person or entity (hereinafter “Respondent”).
The Domain Names <faceandbookpizza.com> and <fasebocpizza.com> resolve to a website which contains a “donation” button and the sentence: “If you would like to donate to this cause please contact us for more information on how to be part of Facebook Pizza.” The site also bears a purported copyright legend: “Copyright © Facebook Pizza Enterprise.”
The domain name <facebookpizza.com> was recovered by Complainant in a previous UDRP proceeding against this Respondent. The website to which the Domain Names <faceandbookpizza.com> and <fasebocpizza.com> resolve include an inactive website “facebookpizza.com/pricing-plan/”. According to Complainant, this suggests that Respondent intended to charge pizza restaurants for a listing on Respondent’s website.
The Domain Names <faceandbookforanimal.com> and <fasebocforanimal.com> resolve to a login page for an apparent social networking site with drawings of animals and other content. The site makes multiple references to the FACEBOOK trademark.
The Domain Name <instanride.com> resolves to a website purporting to serve as a social networking site featuring cars, bicycles, and other modes of transportation. The “About” section of this site refers to “Instagranforride” as a “social network.” The site also makes a number of references to the INSTAGRAM mark.
Complainant asserts that, in previous UDRP proceedings, Complainant has recovered from this same Respondent dozens of other domain names which were found to be confusingly similar to Complainant’s FACEBOOK and INSTAGRAM marks.
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of each of the Domain Names. Complainant also asserts that the various Respondents named in this proceeding should be considered a single Respondent because the evidence shows that all five Domain Names are under common control.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings – Consolidation Issue
Under section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may consolidate in a single proceeding a complaint filed against multiple respondents, based primarily on 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.
Guided by these principles, the Panel here considers the arguments and evidence advanced by the Complainant, the most relevant of which are summarized below.
The WhoIs database and other documentation annexed to the Complaint show that: (1) the same physical address is associated with all five Domain Names; (2) the same phone number is associated with two of the Domain Names, and another phone number is associated with the other three Domain Names; (3) two of the Domain Names are registered to a supposed entity called youpupy llc, and two of the Domain Names are registered to Rafael Cuellar; (4) Rafael Cuellar is an agent of youpupy, llc; (5) with respect to the one Domain Name not expressly registered to Rafael Cuellar or youpupy, llc, <fasebocforanimal.com>, the Domain Name <faceandbookforanimal.com> is redirected to <fasebocforanimal.com>; and (6) the same Registrar is used for all five Domain Names.
Complainant furnishes several other bases upon which to conclude that all five Domain Names are under the common control of a single person or entity. Moreover, Complainant notes that the websites to which the Domain Names resolve are similar to websites associated with other domain names that Complainant previously recovered from this Respondent in prior UDRP proceedings.
Respondent has not refuted any of the foregoing allegations nor challenged any of the evidence offered in support thereof.
The Panel has little doubt on this record that all five Domain Names are under common control, and that consolidation of the five subject Domain Names in this single proceeding is appropriate.
The Panel sees no injustice to any of the Parties here, as the Panel finds that each purported Respondent had the opportunity to step forward and say, “I am not with those other respondents, and here’s my proof.” Accordingly, the Panel will deem all Respondents here as a single Respondent, and will refer to Respondent in the singular hereafter.
7. Discussion and Findings - Merits
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademarks FACEBOOK and INSTA through registration and use demonstrated in the record.
The Panel also concludes that the Domain Names are confusingly similar to these marks.
With respect to the Domain Names <faceandbookpizza.com> and <faceandbookforanimal.com>, the Panel finds that the famous trademark FACEBOOK is clearly recognizable within these Domain Names, notwithstanding the additional words “pizza” and “for animal,” and notwithstanding the interposition of the word “and” between “face” and “book.” In another case, the panel held that the domain name <chatsexroulette.com> was confusingly similar to the trademark CHATROULETTE. See Andrey Ternovskiy dba Chatroulette v. Lloyd Ales, WIPO Case No. D2018-0648. If the jarring word “sex” did not significantly dilute confusing similarity in the Chatroulette case, then it would seem logically to follow that the unspectacular word “and” does little or nothing to efface the prominence of the famous FACEBOOK mark in these Domain Names.
With regard to the Domain Names <fasebocpizza.com> and <fasebocforanimal.com>, the similarity between these Domain Names and the FACEBOOK mark is obviously less than was the case for the two Domain Names discussed in the prior paragraph. Even so, the Panel finds sufficient visual and aural similarity between the misspelled (or nonexistent) word “faseboc” and the trademark FACEBOOK to conclude that these Domain Names are confusingly similar to the famous FACEBOOK mark, notwithstanding the additional words “pizza” and “foranimal”.
Finally, the Panel finds the Domain Name <instanride.com> to be confusingly similar to Complainant’s INSTA trademark. The entire INSTA mark is recognizable within that Domain Name, and the additional letter “n” and word “ride” do not prevent a finding of confusing similarity between the mark and the Domain Name.
Respondent, who did not try to refute any of Complainant’s allegations or arguments, is in no position seriously to dispute the foregoing “confusing similarity” analysis. Given that, as is discussed hereafter, Respondent is a serial cybersquatter (even if one confines oneself to this Complainant) and that the five Domain Names here resolve to websites at which Complainant’s FACEBOOK and INSTA marks are liberally mentioned, Respondent’s own conduct would seem to indicate that he believes that these Domain Names are confusingly similar to Complainant’s trademarks.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not come forward in this proceeding to articulate, much less demonstrate, his bona fides vis-à-vis the Domain Names. Nor does Respondent deny that he was the same Respondent who was found in bad faith in prior UDRP proceedings filed by Complainant involving dozens of domain names. See Facebook, Inc., Instagram, LLC v. Rafael Cuellar, Facebookfor Animal.cop, WIPO Case No. D2019-1827, and Facebook, Inc. and Instagram, LLC v. Rafael Cuellar, WIPO Case No. D2018-2426. In short, Respondent is a serial cybersquatter, and nothing in this undisputed record even hints that the conduct surrounding any of the five subject Domain Names falls outside Respondent’s prior course of cybersquatting conduct.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. It is obvious from the website content, the characters contained in the Domain Names, and the Parties’ prior history that Respondent was targeting Complainant’s trademarks when registering and using these Domain Names. The Panel concludes that Respondent registered and used these Domain Names in bad faith within the meaning of the
above-quoted Policy paragraph 4(b)(ii).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <faceandbookforanimal.com>, <faceandbookpizza.com>, <fasebocforanimal.com>, <fasebocpizza.com>, <instanride.com> be transferred to Complainant.
Robert A. Badgley
Date: August 9, 2021