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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. and Instagram, LLC v. Frank Lopez, Domains Auctiom

Case No. DVE2019-0001

1. The Parties

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

The Respondent is Frank Lopez, Domains Auctiom of Caracas, Venezuela (Bolivarian Republic of).

2. The Domain Names and Registrar

The disputed domain names <facebook.co.ve> and <instagram.co.ve> (the “Domain Names”) are registered with NIC-Venezuela – CONATEL (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 22, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center sent an email communication to the Parties on February 25, 2019, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Domain Names is Spanish. The Complainants submitted a request for English to be the language of the proceeding on the same date. The Respondent did not reply to the Center’s communication.

The Center verified that the 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 March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2019.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on April 8, 2019. 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 based their Complaint on the marks FACEBOOK and INSTAGRAM, which are world famous and have been used by the Complainants since 2004 and 2010, respectively, and for which the Complainants currently own several trademark registrations.

The Complainants own rights in numerous trademark registrations for FACEBOOK and INSTAGRAM, that are registered in jurisdictions throughout the world. Such trademark registrations include but are not limited to the following:

United States Trademark Registration No. 3122052, FACEBOOK, registered on July 25, 2006;

International Registration No. 1075094, FACEBOOK, registered on July 16, 2010;

United States Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012 (first use in commerce October 6, 2010); and

International Registration No. 1129314, INSTAGRAM, registered on March 15, 2012.

Copies of all these trademark registrations were attached to Annex 13, of the Complaint.

Given the exclusive online nature of the Complainants’ social networking business, and reflecting its global reach, the Complainants are the owners of numerous domain names consisting of or including the FACEBOOK and INSTAGRAM trademarks under various generic Top-Level Domains (gTLDs) as well as under various country code Top-Level Domains (ccTLDs). Copies of the WhoIs records of some of these domain names were attached in Annex 9 of the Complaint.

The Complainants have also made substantial investments to develop a strong presence online by being active on various social media forums. For instance, Facebook’s official page on Facebook has over 213 million “likes”. In addition, Facebook has 13.5 million followers on Twitter. Instagram’s official Facebook page has around 60 million Facebook “likes” and almost 37 million followers on Twitter.

The Domain Names <facebook.co.ve> and <instagram.co.ve> were registered on April 10, 2016 and November 15, 2015, respectively, with the Registrar NIC-Venezuela – CONATEL.

The Domain Names do not resolve to active websites. Screen captures of the websites at the Domain Names were provided as Annex 11 of the Complaint. Notwithstanding the passive holding of the Domain Names, reverse WhoIs searches on the email address for the Respondent revealed that the Respondent has registered a number of domain names incorporating third-party well known trademarks under the “.ve” ccTLD, including, <amazon.web.ve>, <gmail.web.ve>, <google.web.ve>, <icloud.co.ve>, <linkedin.co.ve>, <twitter.info.ve> and <twitter.web.ve>. Copies of the WhoIs records for the above mentioned domain names were provided as Annex 12 of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainants assert that the Domain Names are identical or confusingly similar to the Complainants’ trademarks FACEBOOK and INSTAGRAM (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1)).

Both Complainants own numerous trademark registrations for FACEBOOK and INSTAGRAM in jurisdictions throughout the world. Such trademark registrations include but are not limited to the following:

– United States Trade Mark Registration No. 3122052, FACEBOOK, registered on July 25, 2006;

– International Registration No. 1075094, FACEBOOK, registered on July 16, 2010;

– United States Trade Mark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012 (first use in commerce October 6, 2010); and

– International Registration No. 1129314, INSTAGRAM, registered on March 15, 2012.

The Complainants have therefore established trademark rights in FACEBOOK and INSTAGRAM for the purposes of paragraph 4(a)(i) of the Policy. The Domain Names incorporate the Complainants’ FACEBOOK and INSTAGRAM trademarks in their entirety, without alteration or addition. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in 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”.

Further, the applicable Top-Level Domain extension, in this case “.co.ve”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. Therefore, the Domain Names are identical to the Complainants’ trademarks in accordance with paragraph 4(a)(i) of the Policy.

On the other hand, the Complainants submit that the Respondent has no rights or legitimate interests in the Domain Names. More so, the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the Domain Names, and the Respondent is not a licensee of the Complainants, nor has the Respondent been otherwise authorized by the Complainants to make any use of their FACEBOOK or INSTAGRAM trademarks, in a domain name or otherwise.

The Complainants assert that the Domain Names were registered and are being used in bad faith, inter alia, pursuant to paragraph 4(b)(ii) of the Policy. The Complainants’ FACEBOOK and INSTAGRAM trademarks are inherently distinctive and well known throughout the world in connection with their social-network services. Furthermore, the Complainants’ trademarks have been continuously and extensively used since the respective launching of their services and have rapidly acquired considerable reputation and goodwill worldwide. Therefore, the Respondent cannot credibly argue that he was unaware of the Complainants’ trademarks at the time of registration of the Domain Names in 2015 and 2016.

Given the overall circumstances of the case, in particular the renown and popularity of the Complainants throughout the world, together with the nature of the Domain Names themselves (being identical to the Complainants’ trademarks), there simply cannot be any actual or contemplated good faith use by the Respondent (or any third party) of the Domain Names that would not create a misleading impression of association with the Complainants. Rather, the Complainants submit that any such use would invariably result in misleading diversion and taking unfair advantage of the Complainants’ rights.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of Proceedings

Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.

The Complainants state that, to the best of their knowledge, the language of the Registration Agreement pursuant to which the Domain Names have been registered is Spanish. Nevertheless, the Complainants have filed the Complaint in English, and request that the language of proceedings be English.

The Panel has carefully considered all the circumstances of the case, in particular, the Complainants’ request that the language of proceedings be English; the lack of comment on the language of the proceedings and default of the Respondent; the fact that the Respondent has engaged in the registration of a large number of domain names, many of which contain references to famous brands, including a number of third-party well known trademarks under the “.ve” ccTLD; the fact that the Domain Names do not resolve to active websites and as such, there is no inference to be drawn that the Respondent is capable of communicating in Spanish only; and the fact that Spanish as the language of proceedings could lead to unwarranted delay and costs for the Complainants.

In view of all of the above, the Panel rules that the language of proceedings shall be English.

6.2. Substantive issues

A. Identical or Confusingly Similar

The Panel considers that the information provided by both Complainants clearly attest that the Domain Names <facebook.co.ve and <instagram.co.ve> can be considered identical or confusingly similar to the Complainants’ trademarks FACEBOOK and INSTAGRAM.

In this regard, the Panel agrees with the Complainants’ contentions that the applicable Top-Level Domain extension is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a protected trademark because it is viewed as a standard registration requirement.

Accordingly, this Panel finds that the Domain Names <facebook.co.ve> and <instagram.co.ve> are identical or confusingly similar to the Complainants’ trademarks FACEBOOK and INSTAGRAM; therefore, this requisite has been satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests he may have in the Domain Names. Neither has the Respondent refuted the allegations made by the Complainants. Thus, having been duly notified of the Complaint, the Panel considers the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.

Moreover, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainants have effectively demonstrated to be the holders of registered trademarks and associated domain names, which are prior to the Respondent’s registration of the Domain Names, and that they have not licensed the use or exploitation of the FACEBOOK and INSTAGRAM trademarks to the Respondent.

Therefore, in view of the unrebutted prima facie case made out by the Complainants, the Panel considers that the Complainants have fulfilled the second element required by the Policy.

C. Registered and Used in Bad Faith

This third element requires the Complainants to prove that (1) the Domain Names were registered in bad faith and (2) are being used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.

The Domain Names incorporate the Complainants’ trademarks FACEBOOK and INSTAGRAM.

The Panel finds the Respondent must have had knowledge of the Complainants’ marks and their rights therein at the time the Respondent registered the Domain Names in Venezuela. These findings are based on: (i) the Complainants’ trademarks having a strong reputation and being widely known all over the world; (ii) the Domain Names are confusingly similar to the Complainants’ trademarks; and (iii) the above finding of the Respondent having no rights or legitimate interests in the Domain Names.

Finally, with reference to the passive holding of the Domain Names, given the similarity of the Domain Names to the Complainants’ widely known FACEBOOK and INSTAGRAM trademark and in light of the Complainants’ long standing use of the same, the Panel agrees that the Respondent’s motives to register the Domain Names can only have been to create a likelihood of confusion with the Complainants’
above-mentioned trademarks. This is especially so given the Respondent’s holding of a large number of domain names, many of which contain references to other famous brands, including a number of third-party well known trademarks under the “.ve” ccTLD, such as, <amazon.web.ve>, <gmail.web.ve>, <google.web.ve>, <icloud.co.ve>, <linkedin.co.ve>, <twitter.info.ve> and <twitter.web.ve>.

Consequently, for all these reasons, the Panel finds that the Complainants have met the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <facebook.co.ve> and <instagram.co.ve> be transferred to the Complainants Facebook, Inc. and Instagram, LLC, respectively.

Rodrigo Velasco Santelices
Sole Panelist
Date: April 11, 2019

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