The Complainants are Facebook, Inc. and Instagram, LLC of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Xiamen eName Network Co., Ltd of Xiamen, Fujian, China, the "First Respondent") / weiwei of Beijing, China, the "Second Respondent" (collectively, the "Respondents"), self-represented.
The disputed domain names <facebookenespanol.com>, <faecdook.com>, <faecook.com>, <fecaboock.com>, <hackfacebookid.com>, <iinstagram.com>, <imstagram.com>, <inastagram.com>, <inatagram.com>, <indtagram.com>, <innstagram.com>, <insatagram.com>, <insatgram.com>, <insragram.com>, <insstagram.com>, <instaagram.com>, <instagaram.com>, <instagarm.com>, <instageam.com>, <instaggram.com>, <instagraam.com>, <instagrama.com>, <instagrame.com>, <instagramm.com>, <instagream.com>, <instagrem.com>, <instagrma.com>, <instagrom.com>, <instagrram.com>, <instagrsm.com>, <instagtam.com>, <instagtram.com>, <instalgram.com>, <instamgram.com>, <instargam.com>, <instasgram.com>, <instgaram.com>, <instogram.com>, <instragam.com>, <instrgram.com>, <instsagram.com>, <instsgram.com>, <intgram.com>, <intsagram.com>, <isntagram.com> and <istragram.com> are registered with eName Technology Co., Ltd (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 29, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with all but one of the disputed domain names. On March 2, 2016, 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 March 7, 2016 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 March 11, 2016, with one extra domain name added to the original Complaint. On March 14, 2016, the Center transmitted a request for registrar verification to the Registrar in relation to the added domain name, <faecook.com>. On March 15, 2016, the Registrar transmitted its verification response, confirming that the Respondents are the registrant.
On March 7 and March 14, 2016, the Center transmitted an email respectively to the Parties in both English and Chinese regarding the language of the proceeding. On March 8 and March 16, 2016, the Complainant submitted its request that English be the language of the proceeding. On March 10 and March 18, 2016, the Second Respondent submitted its request that Chinese be the language of the proceeding.
The Center verified that the Complaint and 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 Respondents of the Complaint in English and Chinese, and the proceeding commenced on March 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2016. The Second Respondent submitted its request to automatically extend the Response due date for four calendar days under paragraph 5(b) of the Rules on April 8, 2016. On the same day, the Center confirmed that the Response due date was extended to April 15, 2016. The Response was filed with the Center on April 13, 2016.
On April 22, 2016, the Complainant submitted a Supplemental Filing of Reply to the Response.
The Center appointed Douglas Clark as the sole panelist in this matter on April 26, 2016. 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.
The Complainants are Facebook Inc. ("Facebook") and its wholly owned subsidiary, Instragram LLC. ("Instagram"). The First Complainant, Facebook, is a large social networking company founded in 2004. It has more than 1.59 billion monthly active users and 1.04 billion daily active users on average worldwide (as of December 2015). Its main website "www.facebook.com" is currently ranked as the 2nd most visited website in the world, according to information company Alexa. Facebook's social networking services are provided in more than 70 languages, including Chinese.
The First Complainant is the registered proprietor of the trademark FACEBOOK in many countries around the world including, the USA and China. The first registration in the United States date from 2006 with a claim to first use in commerce in 2004. The first registration in China for FACEBOOK was September 21, 2009.
The Second Complainant, Instagram, is an online photo and video sharing social networking application. It was launched on October 6, 2010. It developed 100,000 users in its first one week, 1 million registered users in its first 2 months (by December 21, 2010) and over 10 million registered users by September 2011, less than a year after it was launched. The Second Complainant reached over 100 million monthly active users by September 2012 and 150 million active users by September 2013. Today, the Second Complainant has over 400 million monthly active users, with more than 40 billion photos shared and an average of 80 million photos uploaded per day.
The Second Complainant is the registered proprietor of the trademark INSTAGRAM in many countries around the world including, the USA. The first registration in the United States was May 22, 2012 with a claim to first use in commerce on October 6, 2010. It has a pending application for the trademark INSTAGRAM in China.
The disputed domain names were registered on the following dates:
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<facebookenespanol.com> <faecdook.com> <faecook.com> <fecaboock.com> <hackfacebookid.com> <iinstagram.com> <imstagram.com> <inastagram.com> <inatagram.com> <indtagram.com> <innstagram.com> <insatagram.com> <insatgram.com> <insragram.com> <insstagram.com> <instaagram.com> <instagaram.com> <instagarm.com> <instageam.com> <instaggram.com> <instagraam.com> <instagrama.com> <instagrame.com> <instagramm.com> <instagream.com> <instagrem.com> <instagrma.com> <instagrom.com> <instagrram.com> <instagrsm.com> <instagtam.com> <instagtram.com> <instalgram.com> <instamgram.com> <instargam.com> <instasgram.com> <instgaram.com> <instogram.com> <instragam.com> <instrgram.com> <instsagram.com> <instsgram.com> <intgram.com> <intsagram.com> <isntagram.com> <istragram.com> |
September 6, 2009 December 1, 2009 December 1, 2009 September 17, 2009 November 23, 2011 January 14, 2011 December 22, 2010 January 14, 2011 December 22, 2010 January 14, 2011 January 14, 2011 January 14, 2011 January 14, 2011 December 22, 2010 January 14, 2011 January 14, 2011 December 22, 2010 December 22, 2010 December 22, 2010 January 14, 2011 January 14, 2011 December 22, 2010 January 14, 2011 December 22, 2010 January 14, 2011 January 14, 2011 January 14, 2011 January 14, 2011 January 14, 2011 January 14, 2011 January 14, 2011 January 18, 2011 January 14, 2011 January 14, 2011 January 14, 2011 January 14, 2011 April 4, 2012 January 14, 2011 July 27, 2011 January 14, 2011 January 18, 2011 December 22, 2010 April 10, 2012 January 14, 2011 January 14, 2011 July 27, 2011 |
The disputed domain names redirect Internet users to either dynamic advertising pages (at the following URL http://bidr.trellian.com) or to parking pages displaying commercial links targeting the Complainant's trademarks and related services, for instance, "Facebook Login", "Facebook Sign up" and "Instagram", "Download Instagram", "Photos", etc. Upon clicking on said links, Internet users are redirected to third party commercial websites.
With regard to the disputed domain names <facebookenespanol.com> and <hackfacebookid.com> the Complainants contend that they identically reproduce the First Complainant's FACEBOOK trademark with the mere addition of generic terms such as "en espanol" (which means "in Spanish" in English) and "hack id".
With regard to the remaining domain names, the Complainants contend they consist of common or obvious misspellings of the Complainants' FACEBOOK and INSTAGRAM trademarks. The only difference between the disputed domain names and the Complainants' trademarks is the omission, addition or replacement of one or more letters. Prior panels deciding under the Policy have held that obvious or common misspellings of a trademark are insufficient to distinguish a domain name from a complainant's trademark.
The Complainants submit that the Respondents have no rights or legitimate interest in the disputed domain names. The Complainants are not in anyway related to the Respondents. Further, the Respondents have not made bona fide offerings under the disputed domain names nor is it commonly known by the disputed domain names.
The Complainants submit that the disputed domain names were registered and are being used in bad faith with the intention of attracting Internet users to the websites under the disputed domain names. The Complainants submit that the Respondents knowingly registered the disputed domain names so as to attract Internet users to parking pages and generate financial gain.
With regards to the disputed domain names that the Complainants allege are confusingly similar to INSTAGRAM, the Complainants allege that the registration of the disputed domain names on dates soon after Instagram was launched and around the time it had reached 1 million users is clear evidence of registration in bad faith.
The Second Respondent submits that the earliest it registered the disputed domain names was September 6, 2009. It purchased the disputed domain names with the purpose of establishing its own company and selling products. It has legally registered the disputed domain names. In 2010, the Second Respondent commenced its Instagram related business. Facebook purchased Instagram in 2012. Instagram only purchased the domain name <instagram.com> in February 2011. The Second Respondent therefore asserts it has prior rights.
The Second Respondent contends that Facebook and Instagram are not well known in China because it is not possible to access their pages in China. From a legal perspective in order to have trade name protection in China it is necessary to have registered or used a trade name; or, manufactured products. The Complainants do not have any business presence in China. It is indisputable that their websites are not accessible in China.
Further, the Second Respondent contends that the Second Complainant does not have a registered trademark in China. It only filed an application for INSTAGRAM in China on September 4, 2013. The Second Complainant cannot prove that it was well known in China before September 6, 2009. The Second Respondent asserts further that there is no such thing as a "domain name right" in China.
The Second Respondent asserts that it has rights in the disputed domain names which it has legally registered. It registered the disputed domain names prior to the Second Complainant acquiring the domain name <instagram.com>.
Finally, the Second Respondent asserts that the Complainants have not produced any evidence of bad faith registration. There is no evidence it has sought to sell or transfer the disputed domain names to others and the Complainants have not produced any evidence to show their fame in China to establish the disputed domain names have been registered to confuse consumers.
Procedural Issues
The Complainants have requested consolidation of complaints on the basis that the Second Complainant is a wholly owned subsidiary of the First Complainant and they are making a complaint against the same respondent.
The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. The Second Complainant is a subsidiary of the First Complainant and they have common interests. (See WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.16.)
The language of the Registration Agreements is Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by 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, having regard to the circumstances of the administrative proceeding."
The Complainants requested the language of the proceeding be English on the grounds that inter alia, the Complainants conducted business in English and they would be unduly burdensome for them to translate the Complaint into English, and that the websites at the disputed domain names are in English and target English speakers.
The Second Respondent requested the language of the proceeding be Chinese on the basis that paragraph 11 of the Rules requires that the language of the proceeding shall be the language of the Registration Agreement, and because the Complainants are large companies and it is more equitable to proceed in Chinese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Second Respondent filed a Response in Chinese. From the Response, it is clear that the Second Respondent has understood the claim made against it and has been able to defend itself. Many of the webpages under the disputed domain names are all in English indicating that the Second Respondent does business in English. The Panel will follow the Center's preliminary determination.
The Panel will render its decision in English.
The Reply was filed by the Complainants without permission of the Panel and was unsolicited. The general consensus of panelists is that supplemental filings should only be accepted if there are "exceptional circumstances" which explain why the party submitting the filing was not able to present the evidence in the first place. Further, where a panel decides to accept the filing, the panel should give the other party a chance to respond (See WIPO Overview 2.0, paragraph 4.2).
The Panel has reviewed the Reply and the evidence attached to it and declines to accept it, noting that it would not have had any effect on the outcome of the case.
Substantive Issues
The disputed domain names are confusingly similar to the Complainants' trademarks FACEBOOK and INSTAGRAM. With regard to <facebookenespanol.com> and <hackfacebookid.com> the domain names incorporate the Complainants' FACEBOOK trademark in full with the addition of generic terms "en espanol" (which means "in Spanish" in English) and "hack" and "id". The disputed domain names <faecdook.com>, <faecook.com> and <fecaboock.com> are all clear misspellings of FACEBOOK. The other disputed domain names are clear misspellings of INSTAGRAM.
The Panel notes that the First Complainant, Facebook, did not did not have a registered trademark for FACEBOOK in China when some of the disputed domain names were filed and that the Second Complainant has not yet registered INSTAGRAM in China and that its application is pending.
The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. Such factors may, however, bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview 2.0.)
The first part of paragraph 4(a) of the Policy is therefore satisfied.
Paragraph 2.1 of the WIPO Overview 2.0 provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainants have made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights or legitimate interests. These are:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Second Respondent has not provided any evidence to show preparations to use the disputed domain names. On the contrary, the Second Respondent admits that despite the lapse of between 4 to 6 years it has not started its business. Neither of the Respondents are commonly known by any of the disputed domain names.
Essentially, the Second Respondent's arguments are directed to paragraph 4(c)(iii) of the Policy. The Second Respondent alleges that it has rights and legitimate interests on the basis that it registered the disputed domain names in order to develop its Facebook and Instagram businesses. For the disputed domain names <facebookenespanol.com>, <faecdook.com> and <fecaboock.com> these were registered before the First Complainant has trademark registrations in China and for Instragram, these were registered before the Second Complainant had any trademark registrations any where in the world and before it acquired the domain name <instagram.com>.
The disputed domain names <facebookenespanol.com>, <faecdook.com> and <fecaboock.com> were, however, all registered after the First Complainant had trademark registrations in the United States and other countries.
All of the disputed domain names that are confusingly similar to INSTAGRAM were registered after Instagram commenced business and had already proved its popularity.
The registrations were clearly made to ride on the coattails of the fame of the Complainants. The websites under the disputed domain names are not just available in China and, for the most part, are in English. They are intended to divert consumers around the world to the Respondents' websites. The use made by the Respondents is not fair use.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
The Panel finds that the disputed domain names were all registered in bad faith and are being used in bad faith. The Respondent clearly knew of the Complainants, Facebook and Instagram, when it registered the disputed domain names. It uses the disputed domain names to generate click through revenue or in connection with other advertising schemes.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The websites under the disputed domain names are accessible worldwide and for the most part are in English. The Respondents are clearly seeking to attract Internet users around the world to their websites under the disputed domain names. Therefore, whether the Complainants' websites can be accessed in China or not is irrelevant.
The third part of paragraph 4(a) of the Policy is, therefore, satisfied.
For the foregoing reasons in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders:
(a) that the disputed domain names <facebookenespanol.com>, <faecdook.com>, <faecook.com>, <fecaboock.com> and <hackfacebookid.com> be transferred to the First Complainant; and
(b) that the disputed domain names <iinstagram.com>, <imstagram.com>, <inastagram.com>, <inatagram.com>, <indtagram.com>, <innstagram.com>, <insatagram.com>, <insatgram.com>, <insragram.com>, <insstagram.com>, <instaagram.com>, <instagaram.com>, <instagarm.com>, <instageam.com>, <instaggram.com>, <instagraam.com>, <instagrama.com>, <instagrame.com>, <instagramm.com>, <instagream.com>, <instagrem.com>, <instagrma.com>, <instagrom.com>, <instagrram.com>, <instagrsm.com>, <instagtam.com>, <instagtram.com>, <instalgram.com>, <instamgram.com>, <instargam.com>, <instasgram.com>, <instgaram.com>, <instogram.com>, <instragam.com>, <instrgram.com>, <instsagram.com>, <instsgram.com>, <intgram.com>, <intsagram.com>, <isntagram.com> and <istragram.com> be transferred to the Second Complainant.
Douglas Clark
Sole Panelist
Date: May 10, 2016