WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. and Instagram, LLC v. Brandon Glidden

Case No. D2021-2008

1. The Parties

The Complainants are Facebook, Inc., United States of America (“United States”), and Instagram, LLC, United States United States, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Brandon Glidden, United States.

2. The Domain Names and Registrar

The disputed domain names <facebookbaseballbreaks.com>, <facebook-breaks.com>, <facebookcardbreaker.com>, <facebookcardbreakers.com>, <facebook-cardbreaks.com>, <facebookcardrips.com>, <facebookfootballcardbreaks.com>, <facebookfutbolboxbreak.com>, <facebookfutbolboxbreaks.com>, <facebookfutbolbreak.com>, <facebookfutbolbreaks.com>, <facebookfútbolbreaks.com> ([xn--facebookftbolbreaks-88b.com]), <facebookfutbolcard.com>, <facebookfútbolcard.com> ([xn--facebookftbolcard-91b.com]), <facebookfutbolcards.com>, <facebookfútbolcards.com> ([xn--facebookftbolcards-r5b.com], <facebookfútbolcasebreaks.com> ([xn--facebookftbolcasebreaks-6nc.com]), <facebookfútboltradingcard.com> ([xn--facebookftboltradingcard-orc.com]), <facebookgroupbreaker.com>, <facebookgroupbreakers.com>, <facebookpokemoncardgroup.com>, <facebookpokemoncardgroups.com>, <facebooksportcardgroup.com>, <facebooksportscardbreak.com>, <facebooksportscardrips.com>, <facebooktradingcardbreak.com>, <facebooktradingcardbreaks.com>, <instagrambaseballbreaks.com>, <instagrambasketballbreaks.com>, <instagramcardbreaks.com>, <instagram-cards.com>, <instagramcardstore.com>, <instagramfootballbreak.com>, <instagramfootballbreaks.com>, <instagramfootballcard.com>, <instagramfootballcards.com>, <instagramfootballcardshop.com>, <instagramfootballcardstore.com>, <instagramgroupbreak.com>, <instagramsportsbreaks.com>, <instagramsportscardbreaks.com>, <instagramsportscardsbreak.com>, <instagramsportscardsbreaks.com>, <instagramteambreaks.com>, <livefacebookbreak.com>, <livefacebookbreaks.com>, <liveinstagrambreaks.com>, <soccerfutbolfacebookgroup.com>, and <soccerfútbolfacebookgroup.com> ([xn--soccerftbolfacebookgroup-mrc.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 24, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 28, 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 Complainant on June 29, 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 June 30, 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 July 12, 2021. On July 19, 2021, the Respondent sent an informal email to the Center that stated, “What do you want?” In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit a Response to the Complaint. The Center informed the Parties of its commencement of Panel Appointment on August 3, 2021.

The Center appointed William F. Hamilton as the sole panelist in this matter on August 6, 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. 1280043, FACEBOOK, registered on December 12, 2014;
- United States Trademark No. 4146057, INSTAGRAM, registered on May 22, 2012, (first use in commerce on October 6, 2010); and
- International Trademark No. 1129314, INSTAGRAM, registered on 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; and Instagram, LLC v. lu xixi, PRIVATE, WIPO Case No. D2015-1168.

The Respondent registered the forty-nine (49) disputed domain names on April 9, 2021. All the disputed domain names resolve to Registrar parking pages featuring links to various commercial services.

5. Parties’ Contentions

A. Complainants

The Complainants assert that the forty-nine disputed domain names are confusingly similar to the Complainants’ Marks because each of the disputed domain names entirely incorporates one or other of the Marks and merely adds groups of dictionary terms as either suffices or prefixes to the disputed domain names. 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 any 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 to parking websites for commercial gain.

B. Respondent

The Respondent did not reply to the Complainants’ contentions. The Respondent did send an email communication to the Center on July 19, 2021, stating, “What do you want?”

6. Consolidation

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. The disputed domain names were registered by the same Respondent on the same day with the same Registrar and utilize a similar abusive pattern wholly incorporating the Complainants’ well-known Marks. 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.

Each of the disputed domain names is composed entirely of one of the other the Complainants’ Marks typically followed by, although sometimes preceding, combinations of sports and gaming dictionary terms such as, by way of example, “fútbol breaks”, “card rips”, “trading card breaks”, “baseball breaks”, “football cards”, “team breaks”, “sports advertising”, and “soccer fútbol group”.

A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy. 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. Seealso 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”); See Nomura International Plc and Nomura Holdings, Inc. v. Whois Privacy Protection Service, Inc. / PUK SERVICES, WIPO Case No. D2015-2036; and Nomura International Plc. v. Name Redacted, WIPO Case No. D2021-0654.

The generic Top-Level Domain (“gTLD”) 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.

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, by incorporating in their entirety the Complainants’ distinctive Marks the disputed domain names carry a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Moreover, the disputed domain names all resolve to parking websites which further supports the conclusion that the Respondent has no rights or legitimate interests in the various forty-nine disputed domain names. See 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 non‑exhaustive 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 online 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. The Respondent is based in the United States. It is inconceivable that the Respondent was unaware of the Complainants or the Marks. See Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145.

Common sense compels the conclusion that the Respondent was quite aware of the Complainants’ Marks when registering and deploying the forty-nine disputed domain names all of which contain one of the Complainants’ Marks followed or preceded by various combinations of sports or gaming dictionary terms. The mere fact of the Respondent registered forty-nine disputed domain names on the same day with the same registrar using repeated combinations of sports terms in conjunction with the Marks that resolve to parking websites presents a compelling case of bad faith registration and use. See Facebook, Inc. v. Daniel Khrayzat, WIPO Case No. D2019-2813; and Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, WIPO Case No. D2016-1710.

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 resolve to parking websites confuses Internet users. Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564. The Respondent registered the forty-nine disputed domain names on a single day utilizing a privacy shield which under the circumstances of this case is further evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.6.

Finally, it is difficult to conceive of any use that the Respondent might make of the forty-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; and Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335.

The Complainants have met their burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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;

<facebookbaseballbreaks.com>, <facebook-breaks.com>, <facebookcardbreaker.com>, <facebookcardbreakers.com>, <facebook-cardbreaks.com>, <facebookcardrips.com>, <facebookfootballcardbreaks.com>, <facebookfutbolboxbreak.com>, <facebookfutbolboxbreaks.com>, <facebookfutbolbreak.com>, <facebookfutbolbreaks.com>, <facebookfútbolbreaks.com>, ([xn--facebookftbolbreaks-88b.com]), <facebookfutbolcard.com>, <facebookfútbolcard.com>, ([xn--facebookftbolcard-91b.com]), <facebookfutbolcards.com>, <facebookfútbolcards.com>, ([xn--facebookftbolcards-r5b.com]), <facebookfútbolcasebreaks.com> ([xn--facebookftbolcasebreaks-6nc.com]), <facebookfútboltradingcard.com> ([xn--facebookftboltradingcard-orc.com]), <facebookgroupbreaker.com>, <facebookgroupbreakers.com>, <facebookpokemoncardgroup.com>, <facebookpokemoncardgroups.com>, <facebooksportcardgroup.com>, <facebooksportscardbreak.com>, <facebooksportscardrips.com>, <facebooktradingcardbreak.com> <facebooktradingcardbreaks.com>, <livefacebookbreak.com>, <livefacebookbreaks.com>, <soccerfutbolfacebookgroup.com> and <soccerfútbolfacebookgroup.com> ([xn--soccerftbolfacebookgroup-mrc.com]), be transferred to the Complainant Facebook, Inc.,

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;

<instagrambaseballbreaks.com>, <instagrambasketballbreaks.com>, <instagramcardbreaks.com>, <instagram-cards.com>, <instagramcardstore.com>, <instagramfootballbreak.com>, <instagramfootballbreaks.com>, <instagramfootballcard.com>, <instagramfootballcards.com>, <instagramfootballcardshop.com>, <instagramfootballcardstore.com>, <instagramgroupbreak.com>, <instagramsportsbreaks.com>, <instagramsportscardbreaks.com>, <instagramsportscardsbreak.com>, <instagramsportscardsbreaks.com>, <instagramteambreaks.com>, <liveinstagrambreaks.com> be transferred to the Complainant Instagram, LLC.

William F. Hamilton
Sole Panelist
Date: August 11, 2021