WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. and Instagram, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Mihael Megatron

Case No. D2019-0797

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mihael Megatron, Latvia.

2. The Domain Names and Registrar

The disputed domain names <facebooĸ.net> (<xn--faceboo-jhb.net>) (the “First Disputed Domain Name”) and <lnstagram.link> (the “Second Disputed Domain Name”, together the “Disputed Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2019. On April 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Disputed Domain Name. On April 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the First Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On April 19, 2019, the Complainant filed a first amended Complaint, including a request to add the Second Disputed Domain Name to the proceedings. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Second Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Second Disputed Domain Name which differed from the named Respondent and contact information in the Amended Complaint. The Center sent an email communication to the Complainant on April 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on April 26, 2019.

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

The Center appointed Jacques de Werra as the sole panelist in this matter on June 14, 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 First Complainant is the world’s leading provider of online social networking services. Founded in 2004, the First Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. Today, the First Complainant has more than 2.23 billion monthly active users and 1.47 billion daily active users on average worldwide.

The Second Complainant is a leading online photo and video sharing social networking application. It was launched on October 6, 2010 and was acquired by the First Complainant in April 2012. The Complainant has currently over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. The Second Complainant owns and operates many domain names including <instagram.com>.

The First Complainant owns many trademarks reflecting the “FACEBOOK” term including the following trademark (“the First Trademark”):

− European Union (“EU”) Trademark No. 004535381, for FACEBOOK, registered on June 22, 2011;
− International Trademark No. 1075094, for FACEBOOK, registered on July 16, 2010.

The Second Complainant owns many trademarks reflecting the “INSTAGRAM” term including the following trademark (“the Second Trademark”):

− EU Trademark No. 014493886, for INSTAGRAM, registered on December 24, 2015;
− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012.

The First Trademark and the Second Trademark (together “the Trademarks”) – given that they include EU trademarks - cover Latvia where the Respondent Mihael Megatron is based.

The First Disputed Domain Name was registered on December 30, 2018 and the Second Disputed Domain Name was registered on January 18, 2019. The Disputed Domain Names are currently redirecting to the same inactive website at the domain name <accounts.xn--gmai-oza.com> registered under the Punycode system and translating as the IDN <accounts.gmaiı.com>.

The Complainant’s lawyers sent a request to suspend the First Disputed Domain Name to the Registrar and a disclosure request for the underlying registrant details to the privacy service Whoisguard operated by the Registrar. The Registrar refused to suspend the First Disputed Domain Name on January 26, 2019. On January 28, 2019, the privacy service refused to disclose the underlying registrant details stating that they “cannot remove any content, or links, from the website, provide the registrant contact information, or terminate the Privacy Protection as [they] do not have control over the service”. The privacy service did not answer the email from the Complainant’s lawyers asking them to indicate the entity that does have the control over the privacy service.

5. Parties’ Contentions

A. Complainant

The Complainants submit that the Disputed Domain Names are confusingly similar to a trademark in which the Complainants respectively have rights.

The First Disputed Domain Name <xn--faceboo-jhb.net> translates as the IDN <facebooĸ.net> and contains part of the First Complainant’s First Trademark.

The Second Disputed Domain Name consists of typographical misspelling of the Second Trademark by the substitution of the letter “i” by the letter “l”. The only difference between the Second Disputed Domain Name and the Second Trademark is the mere substitution of the letter “i” by the letter “l” under the “.link” Top-Level Domain (“TLD”). When written in lower case “lnstagram” appears visually similar to the Complainant’s “Instagram” branding, when it is written with a capital letter “I”.

The Complainants submit that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that 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 Disputed Domain Names.

The Respondent is not a licensee of the Complainants, nor has it been otherwise allowed by the Complainants to make any use of the Trademarks, in a domain name or otherwise.

The Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

The Respondent cannot conceivably claim that it is commonly known by the Disputed Domain Names, in accordance with paragraph 4(c)(ii) of the Policy, given the Complainant’s notoriety and the fact that the Trademarks are inherently distinctive trademarks that are exclusively associated with the Complainants.

Neither can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy.

Finally, given the renown of the Complainants’ Trademarks worldwide, it is simply not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Names by the Respondent (or a third party) that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights. The Complainants therefore assert that the Respondent has no rights or legitimate interests in the Disputed Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

The Complainants assert that the Disputed Domain Names were registered and are being used in bad faith. Given the Complainants’ renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainants’ Trademarks at the time of registration of the Disputed Domain Names, particularly as the Complainants’ Trademarks significantly predate the registration date of the Disputed Domain Names. The Complainants also submit that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the Disputed Domain Names incorporating the Complainants’ Trademarks for the purpose of preventing the Complainants from reflecting their trademarks in corresponding domain names.

The Complainants further submit that an additional strong indication of the Respondent’s bad faith is the fact that the Respondent registered the Disputed Domain Names using a privacy protection service to conceal his identity. Finally, given the Complainants’ highly distinctive and famous trademarks, it is unlikely that the Respondent could have registered the Disputed Domain Names for any legitimate reason. With respect to the bad faith use of the Disputed Domain Names, the Complainants submit that, given that the Respondent has never actively used the Disputed Domain Names, such passive holding of the Disputed Domain Names cannot preclude a finding of bad faith given the overall circumstances of the case, notably given the Complainants’ distinctiveness and renown worldwide and the Respondent’s failure to provide any evidence of actual or contemplated good faith use of the Disputed Domain Names. The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional strong indication of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Procedural issue: Consolidation of the Proceedings / Addition of the Second Disputed Domain Name

The Panel must decide whether it can decide in these proceedings on the First Disputed Domain Name and on the Second Disputed Domain Name.

Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview 3.0, section 4.11.1.

As a matter of principle, requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced must be addressed by the panel on appointment. Pursuant to the WIPO Overview 3.0, section 4.12.2, panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. WIPO Overview 3.0, section 4.12.2.

In this case, the Panel considers that it is adequate to authorize the addition of the Second Disputed Domain Name (against which the Second Complainant wants to proceed) in view of the connexity between the Complainants (the Second Complainant is a subsidiary of the First Complainant) and because of the identity of the Respondent who holds the Disputed Domain Names. See by analogy Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd / weiwei, WIPO Case No. D2016-0409.

The addition of the Second Disputed Domain Name does not cause any delay in the proceedings because such addition was made in the submission of the first amended complaint on April 19, 2019 against which the Respondent has had an opportunity to respond (which it has not done, given that the Respondent has not participated in these proceedings).

The Panel notes that it has been established that the First Disputed Domain Name and the Second Disputed Domain Name are held by the same Respondent so that this case is not a case against multiple and different respondents for which specific rules may apply. See WIPO Overview 3.0, section 4.11.2.

On this basis, the Panel holds that it can decide the dispute relating to the First Disputed Domain Name and to the Second Disputed Domain Name in these proceedings.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainants have rights to a trademark or service mark as reflected in the Trademarks.

A comparison between the First Disputed Domain Name and the First Trademark shows that the First Disputed Domain Name is confusingly similar to the First Trademark. The First Disputed Domain Name <xn--faceboo-jhb.net> translates as the IDN <facebooĸ.net> and thus reflects the distinctive part of the First Complainant’s First Trademark.

The Panel notes in this respect that prior panels have found IDNs and their Punycode translations to be equivalent. See Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211 (“the use of Punycode to create a domain name indistinguishable from a well‑known trademark manifestly does not prevent a finding of identity or confusing similarity between the two”) with reference to Doğan Internet Yayinciliği Ve Yatirim Anonim Şirketi v. Moniker Privacy Services / H A Lempka - Alpha Domains, WIPO Case No. D2013-2244; see also AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233.

A comparison between the Second Disputed Domain Name and the Second Trademark shows that the Second Disputed Domain Name is confusingly similar to the Second Trademark because the Second Disputed Domain Name constitutes a misspelling of the Second Trademark (typographical misspelling of the Second Trademark by the substitution of the initial letter “i” by the letter “l”). WIPO Overview 3.0, section 1.9.

As a result, based on the rights of the Complainants in the Trademarks and on the confusing similarity between the Disputed Domain Names and the Trademarks, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

In the Panel’s opinion, the Complainants have made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Names that reflect the highly distinctive Trademarks respectively owned by the Complainants without their authorization, in a way that can only reasonably be explained as a reference to the Complainants’ Trademarks.

The Complainants have thus established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Names which has not been challenged by the Respondent (even assuming that it could be challenged) who has not participated in the proceedings.

On this basis, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Trademarks distinctively identify the Complainants’ respective Trademarks so that the choice of the Disputed Domain Names which are clearly intended to replicate the Trademarks cannot be reasonably explained otherwise than as a reference to the Trademarks respectively owned by the Complainants.

The Panel considers that the circumstances surrounding the registration of the Disputed Domain Names and specifically the fact that the Respondent has registered the Disputed Domain Names within a very short period of time without putting them to use and that it has used a privacy service for the registration of the Disputed Domain Names in order to conceal his identity constitute additional elements confirming the bad faith of the Respondent. WIPO Overview 3.0, section 3.6. The Panel further notes that the fact that the Disputed Domain Names are not actively used does not prevent a finding of bad faith under the Policy. WIPO Overview 3.0, section 3.3.

On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

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 First Disputed Domain Name <facebooĸ.net> (<xn--faceboo-jhb.net>) be transferred to the First Complainant and the Second Disputed Domain Name <lnstagram.link> be transferred to the Second Complainant.

Jacques de Werra
Sole Panelist
Date: July 4, 2019