WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Meta Platforms, Inc. and Instagram, LLC. v. Domains by Proxy, LLC / Bazyan Rafiq
Case No. D2021-3626
1. The Parties
The Complainants are Meta Platforms, Inc. (formerly known as Facebook, Inc.) and Instagram, LLC., United States of America (“United States” or “US”), represented by Tucker Ellis, LLP, United States.
The Respondent is Domains by Proxy, LLC, US / Bazyan Rafiq, Romania.
2. The Domain Name and Registrar
The disputed domain name <facebookinstagram.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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. On November 3, 2021, the Center sent a remedy request clarification, the Complainants filed a first amended Complaint on the same date. The Center sent an email communication to the Complainants on November 10, 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 a second amended Complaint on November 15, 2021. The Respondent sent informal email communications to the Center on November 16, and 17, 2021.
The Center verified that the Complaint together with the amended Complaints 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 November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on January 18, 2022. 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
There are two Complainants listed in this case. The first Complainant is Meta Platforms, Inc., which changed its name from Facebook, Inc. on October 28, 2021. The second Complainant is Instagram, LLC, which is a wholly-owned subsidiary of the first Complainant. References to “the Complainant” in this decision are to the two Complainants together. The Panel’s discussion on consolidation is set out in section 6.A. below.
The Complainant operates the Facebook social networking website and mobile application which is listed on Alexa as being the 7th most visited website in the world. The Complainant also operates the Instagram social networking service and mobile application, which is listed on Alexa as being the 23rd most visited website in the world. Both entities are based in the United States.
The Complainant is the owner of a number of trade mark registrations, including FACEBOOK and INSTAGRAM (the “Marks”) around the world, including:
- United States trade mark registration number 3,122,052 for FACEBOOK, registered on July 25, 2006; and
- United States trade mark registration number 4,756,754 for INSTAGRAM, registered on June 16, 2015.
The Complainant is also the registrant of domain names incorporating the Marks, including <facebook.com> and <instagram.com>. The Complainant’s use and registration of the Marks pre-date the registration of the disputed domain name, which was registered on June 15, 2021. The disputed domain name is currently inactive and does not point to any active website. The Respondent has agreed to the transfer of the disputed domain name to the first Complainant, but in doing so appears to have lost control of the disputed domain name from within his domain name account. As such, the Panel has elected to provide a substantive decision on the merits of the Complaint notwithstanding a Panel’s ability, as set out in section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), to order a transfer of a disputed domain name solely on the basis of a respondent’s consent to such transfer.
5. Parties’ Contentions
The Complainant argues that it has rights in each of the Marks by virtue of its ownership of various trade mark registrations for the Marks around the world. It contends that the disputed domain name is confusingly similar to the Marks since it incorporates both of the marks FACEBOOK and INSTAGRAM (which are recognisable within the disputed domain name) under the generic Top-Level Domain (“gTLD”) “.org”.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has created the disputed domain name to give the impression of an affiliation with the Complainant, by creating a likelihood of confusion, contrary to the Policy. The Complainant further alleges that the Respondent has not complied with the Complainant’s brand guidelines on the use of the Marks, which are freely available online.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name and therefore registered it and is using it in bad faith. The Marks, according to the Complainant, are well-known throughout the world and are highly distinctive, making a coincidental adoption of the disputed domain name by the Respondent, incorporating both of the Marks, virtually impossible.
Finally, the Complainant contends that the current passive holding of a domain name remains a use in bad faith under the Policy.
Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith.
The Respondent did not reply substantively to the Complainant’s contentions. It did, however, send three emails to the Center; two on November 16, 2021, and one on November 17, 2021.
The first email stated that the Respondent agreed to transfer the domain name and that they had been liaising with the Registrar in respect of this. The second email, of the same date, forwarded an email chain (from June 2021) in which the Respondent stated their confirmation to transfer the disputed domain name to the Complainant.
The third email forwarded a “confirmation” from the Registrar that the disputed domain name would be removed from the Respondent’s account.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Procedural Issue: Consolidation
The first and second Complainants have requested that this Complaint proceed in both their names against the Respondent. Paragraph 10(e) of the Rules and paragraph 4(f) of the Policy permit such consolidation. Paragraph 10(e) states that “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”, while paragraph 4(f) of the Policy permits a Panel to consolidate “any or all such [domain name] disputes in its sole discretion”. A consensus among Panels constituted through the Center has been reached as to the factors a Panel should consider when exercising that discretion, as set out in section 4.11.1 of the WIPO Overview 3.0, with a view to ensuring that consolidation would be fair and equitable to all parties (i.e. not just the complainant(s) and not just the respondent(s)). These factors include: whether the complainants have a specific common grievance against the respondent; whether the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and whether it would be equitable and procedurally efficient to permit the consolidation.
In assessing these factors, the Panel notes that:
1. The two Complainants are related corporate entities in that Meta Platforms, Inc. owns Instagram LLC;
2. The disputed domain name incorporates a trade mark owned by each of the Complainants; and
3. The Complainants’ complaints are based on the same set of facts and legal basis.
The Panel has had regard to the Policy and the Rules and has determined that it is appropriate to determine the Complaint in respect of the disputed domain name in a single proceeding, such consolidation being fair and equitable to all parties.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, each of the Marks.
Section 1.7 of the WIPO Overview 3.0 provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “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”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Marks, since the disputed domain name incorporates both of the Marks in their entirety. The combination of both Marks does not change that conclusion, nor does the addition of the gTLD “.org”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights.
C. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that neither of the Marks is generic or descriptive but that they enjoy a substantial degree of fame and worldwide renown that makes their coincidental adoption by the Respondent practically impossible. The Complainant confirms that it has not given the Respondent permission to use either of the Marks, in a domain name or otherwise, and there is no evidence that the Respondent has been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Marks, is commonly known by the Marks or has chosen to use the Marks in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, including the failure of the Respondent to contest the Complainant’s allegations in either a substantive response or in any of the three informal correspondences with the Center in which the Respondent sought to accede to the Complainant’s request for the transfer of the disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
The Panel notes that the Marks have already been found by previous UDRP panels to be distinctive and to have a reputation, rather than being a descriptive or generic term, and notes their undoubted worldwide fame and reputation.
The Panel also notes that the disputed domain name was registered on June 15, 2021, several years after the Marks were registered and the Complainant had begun using those Marks. The Panel therefore accepts that the disputed domain name was chosen by reference to the Marks.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Marks is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Marks when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Marks.
The disputed domain name is also being used in bad faith.
Although the disputed domain name does not currently resolve to a website, this does not alter the Panel’s findings above and the Panel finds that the disputed domain name is being used in bad faith under the doctrine of passive holding.
Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding include:
“(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Marks have a substantial reputation and are distinctive of the Complainant, and further notes that the Respondent has not participated substantively in these proceedings or sought to explain its registration and use of the disputed domain name. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Marks. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <facebookinstagram.org> be transferred to the Complainant, Meta Platforms, Inc.
Date: February 8, 2022