WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc., Instagram, LLC v. randy fierro, angels.net, Domains By Proxy, LLC
Case No. D2021-1782
1. The Parties
The Complainants are Facebook Inc. and Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are randy fierro, angels.net, United States, and Domains By Proxy, LLC, United States.
2. The Domain Names and Registrar
The disputed domain names <facebookadvertisinginc.com>, <facebookadvertisingind.com>, <facebookadvertisingindustry.com>, <facebookangel.com>, <facebookangels.com>, <facebookcorps.com>, <facebookdatabase.com>, <facebookdatabases.com>, <facebookdatacenter.com>, <facebookdatacenters.com>, <facebookincorporated.com>, <facebookindinc.com>, <facebookindustry.com>, <facebookindustryinc.com>, <facebookindustryincorporated.com>, <facebookmanufacturing.com>, <facebookmanufacturinginc.com>, <facebookmanufacturingincorporated.com>, <facebookmanufacturingindustry.com>, <facebookproductsinc.com>, <facebookproductsincorperated.com>, <facebookproductsindustry.com>, <facebookpublisherinc.com>, <facebookpublisherind.com>, <facebookpublisherindustry.com>, <facebooktechnology.com>, <facebookuniverseinc.com>, <facebookuniverseincorporated.com>, <instagramadvertisinginc.com>, <instagramadvertisingincorporated.com>, <instagramadvertisingind.com>, <instagramadvertisingindustry.com>, <instagramangel.com>, <instagramangels.com>, <instagramincorporated.com>, <instagramind.com>, <instagramindustry.com>, instagramindustryincororated.com>, <instagrammanufacturinginc.com>, <instagrammanufacturingincorporated.com>, <instagrampublisherinc.com>, <instagrampublisherincorporated.com>, <instagrampublisherind.com>, <instagrampublisherindustry.com>, <facebookbankinc.com>, <facebookbankincorporated.com>, <facebookcorporations.com>, <instagramcorporations.com>, <instagramsocialmedia.com>, <instagrammanufacturing.com>, <facebookhoodies.com>, <facebookproductscorporation.com>, <instagramproductscorporation.com>, <facebookmanufacturingcorporation.com>, <instagrammanufacturingcorporation.com>, <instagramsocialmediainc.com>, <instagramsocialnetwork.com>, <facebookproductscorp.com>, <instagramcorp.com>, <instagramcorporation.com>, <instagramadvertisingcorporation.com>, <instagramadvertisingcorp.com>, <facebookadvertisingcorp.com>, <facebookadvertisingcorporation.com>, <facebookpublishercorp.com>, <facebookpublishercorporation.com>, <instagrampublishercorp.com>, <instagrampublishercorporation.com>, and <instagramtechnology.com> 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 June 7, 2021. On June 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 9, 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 June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on July 13, 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
The Complainants provide online social networking services and have rapidly developed considerable renown and goodwill worldwide, particularly in the United States. The Complainants’ websites at “www.facebook.com” and “www.instagram.com” are among the most visited websites in the world. The Complainants own numerous trademark registrations for the terms FACEBOOK and INSTAGRAM (collectively, the two “Marks’) in many jurisdictions throughout the world, including in the United States. The Complainants’ trademark registrations include but are not limited to the following:
- United States Trademark No. 3041791, FACEBOOK, registered on January 10, 2006, (first use in commerce in 2004):
- International Trademark No. 1075807, FACEBOOK, registered on 16 July 16, 2020:
- United States Trademark No. 4146057, INSTAGRAM, registered on 22 May 22, 2012, (first use in commerce on 6 October 2010): and
- International Trademark No. 1129314, INSTAGRAM, registered on 15 March 15, 2012.
The Complainants also own and utilize domain names around the world that incorporate the Marks, for example, with respect the United States <facebook.us> and <Instagram.us>.
The Complainants’ Marks are highly distinctive, well-known, and uniquely associated with the Complainants’ services and products. Facebook, Inc. v. He Wenming, WIPO Case No. DCC2013-0004; Instagram, LLC v. lu xixi, PRIVATE, WIPO Case No. D2015-1168.
The Respondent registered the following disputed domain names on the dates indicated:
<facebookadvertisingcorp.com>: December 30, 2020
<facebookadvertisingcorporation.com>: December 30, 2020
<facebookadvertisinginc.com>: November 3, 2016
<facebookadvertisingind.com>: November 3, 2016
<facebookadvertisingindustry.com>: November 3, 2016
<facebookangel.com>: July 3, 2017
<facebookangels.com>: July 3, 2017
<facebookbankinc.com>: July 16, 2019
<facebookbankincorporated.com>: July 17, 2019
<facebookcorporations.com>: April 30, 2020
<facebookcorps.com>: July 24, 2020
<facebookdatabase.com>: July 3, 2017
<facebookdatabases.com>: July 3, 2017
<facebookdatacenter.com>: July 3, 2017
<facebookdatacenters.com> July 3, 2017
<facebookhoodies.com>: June 6, 2020
<facebookincorporated.com>: January 28, 2016
<facebookindinc.com>: March 4, 2016
<facebookindustry.com>: March 3, 2016
<facebookindustryinc.com>: March 3, 2016
<facebookindustryincorporated.com>: March 3, 2016
<facebookmanufacturing.com>: October 19, 2016
<facebookmanufacturingcorporation.com>: July 27, 2020
<facebookmanufacturinginc.com>: November 4, 2016
<facebookmanufacturingincorporated.com>: November 4, 2016
<facebookmanufacturingindustry.com>: June 3, 2017
<facebookproductscorp.com>: September 29, 2020
<facebookproductscorporation.com>: July 26, 2020
<facebookproductsinc.com>: November 4, 2016
<facebookproductsincorperated.com>: October 19, 2016
<facebookproductsindustry.com>: June 3, 2017
<facebookpublishercorp.com>: January 4, 2021
<facebookpublishercorporation.com>: January 4, 2021
<facebookpublisherinc.com>: November 3, 2016
<facebookpublisherind.com>: November 3, 2016
<facebookpublisherindustry.com>: November 3, 2016
<facebooktechnology.com>: July 3, 2017
<facebookuniverseinc.com>: July 3, 2017
<facebookuniverseincorporated.com>: July 3, 2017
<instagramadvertisingcorp.com>: December 30, 2020
<instagramadvertisingcorporation.com>: December 30, 2020
<instagramadvertisinginc.com>: November 4, 2016
<instagramadvertisingincorporated.com>: November 3, 2016
<instagramadvertisingind.com>: November 4, 2016
<instagramadvertisingindustry.com>: November 4, 2016
<instagramangel.com>: July 3, 2017
<instagramangels.com>: July 3, 2017
<instagramcorp.com>: September 30, 2020
<instagramcorporation.com>: December 21, 2020
<instagramcorporations.com>: May1, 2020
<instagramincorporated.com>: March 4, 2016
<instagramind.com>: April 1, 2016
<instagramindustry.com>: April 1, 2016
<instagramindustryincororated.com>: April 1, 2016
<instagrammanufacturing.com>: June 3, 2020
<instagrammanufacturingcorporation.com>: July 28, 2020
<instagrammanufacturinginc.com>: November 4, 2016
<instagrammanufacturingincorporated.com>: November 4, 2016
<instagramproductscorporation.com>: July 27, 2020
<instagrampublishercorp.com>: January 4, 2021
<instagrampublishercorporation.com>: January 4, 2021
<instagrampublisherinc.com>: November 4, 2016
<instagrampublisherincorporated.com>: November 3, 2016
<instagrampublisherind.com>: November 4, 2016
<instagrampublisherindustry.com>: November 4, 2016
<instagramsocialmedia.com>: May 28, 2020
<instagramsocialmediainc.com>: July 29, 2020
<instagramsocialnetwork.com>: July 29, 2020
<instagramtechnology.com>: January 29,2021
The disputed domain names <facebookadvertisingcorp.com>, <facebookcorporations.com>, <facebookcorps.com>,<facebookindustryinc.com>, <facebookmanufacturingcorporation.com>, <facebookproductscorp.com>, <facebookproductscorporation.com>, <facebookproductsinc.com>, <facebookproductsincorperated.com>, <facebookpublishercorp.com>, <instagramind.com>, <instagramindustryincororated.com>,<instagrammanufacturingcorporation.com>, <instagramproductscorporation.com>,<instagramsocialmediainc.com> and <instagramsocialnetwork.com> resolved to parking websites when the Complainant was served according to Annexes to the Complainant while the remaining disputed domain names are inactive and do not appear have ever resolved to an active website. As of this decision, the disputed domain names that previously resolved to parking websites do not appear to be active.
5. Parties’ Contentions
The Complainants assert Respondent engaged in a pattern and practice over a five-year period of registering and using the sixty-nine disputed domain names which are confusingly similar to the Complainants’ Marks because each of the disputed domain names entirely incorporate one or other of the Marks and merely adds dictionary terms as a suffix. The Complainants assert that the Complainants never authorized the Respondent to use the disputed domain names, that the Respondent is not generally known by any of the disputed domain names, and that the Respondent has never engaged in any bona fide commercial activity in connection with and of the disputed domain names. The Complainants assert that the Respondent registered and used the disputed domain names in bad faith to attract unsuspecting internet users for commercial gain.
The Respondent did not reply to the Complainants’ contentions.
The Panel finds that the Complainants are related entities and the claims lodged against the Respondent by the Complainants are similar and show a common pattern and practice extending over a five-year period. Thus, the Panel finds that (i) the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, and (ii) that 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.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainants must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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
The Panel finds that the disputed domain names are confusingly similar to the Complainants’ Marks.
The disputed domain names are all composed entirely of one of the other the Complainants’ Marks followed by the dictionary terms “advertising,” “corporation,” “angel,” “data base,” “product,” “social media,” “inc” (standing for “incorporation”), “corp” (standing for “corporation”), and “ind” (standing for “industry”), or combinations of these dictionary terms or abbreviations.
A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the addition to the Mark is a generic or dictionary term. WIPO Overview 3.0, section 1.7; and Nomura International Plc / Nomura Holdings, Inc. contre Global Domain Privacy / Nicolas Decarli, WIPO Case No. D2016-1535 (transferring <nomura-bank.com>). See also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Nomura International Plc and Nomura Holdings, Inc. v. Whois Privacy Protection Service, Inc. / PUK SERVICES, WIPO Case No. D2015‑2036 (transferring <nomuralabuan.com>); and Nomura International Plc. v. Name Redacted, WIPO Case No. D2021‑0654.
The generic Top-Level Domain of the disputed domain names, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; and Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759 (transferring <monsterenergy.world>).
The Complainants have met their burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainants have specifically disavowed providing the Respondent with permission to use the disputed domain names or either of the Marks. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain names or is commonly known by the disputed domain names. The Complainants have established a prima facie case in their favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain names. Furthermore, the nature of the disputed domain names, being nearly identical to the Mark, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The disputed domain names either resolve to a parking website or are inactive which further supports the conclusion that the Respondent has no rights or legitimate interests in the disputed domain names. Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950; and Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186. The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Complainants have met their burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
1. Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.
2. The Panel finds the disputed domain names were registered and are being used in bad faith.
A simple Internet search, normally undertaken before registering the disputed domain names, would have disclosed the Complainants’ well-known Marks. The Marks are not common or descriptive terms. Common sense compels the conclusion that the Respondent was quite aware of the Complainants’ Marks when registering and deploying the sixty-nine disputed domain names all of which contain one of the other of the Complainants’ Marks followed by a variety of dictionary terms.
Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Marks, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. Instagram LLC v. contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419. The registration by the Respondent of the disputed domain names that are currently inactive is an abusive threat hanging over the head of the Complainant. Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564.
Additionally, the Respondent registered the disputed domain names under a privacy shield which in itself does not establish bad faith use and registration, but which is a factor the Panel may consider. See WIPO Overview 3.0, section 3.6. It further appears that the Respondent has exhibited a pattern and practice of registering and using domain names composed of other well-known trademarks owned by major corporations, for example <airbusincorporated.com>, <barclaysbankinc.com>, <ebayincorporated.com>, <fordmotorinc.com>, and <googlechrometechnology.com>.
Finally, it is difficult to conceive of any use that the Respondent might make of the sixty-nine disputed domain names without the Complainants’ consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>); and Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335 (transferring <monsterenergy.club>).
The Complainants have met their burden under paragraph 4(a)(iii) 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:
be transferred to the Complainant Facebook, Inc., and that the disputed domain names:
be transferred to the Complainant Instagram LLC.
William F. Hamilton
Date: July 20, 2021