The Complainants are Facebook, Inc. (the "First Complainant") of Menlo Park, California, United States of America and Instagram, LLC (the "Second Complainant") of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Lasantha Wickramasinghe, EntsL of Nugegoda, Sri Lanka and Deepika Priyadarshinie, EntsL of Ehaliyagoda, Sabaragamuwa, Sri Lanka,, self-represented.
The disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details.
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 Respondents of the Complaint, and the proceedings commenced on August 15, 2018. The Respondent Lasantha Wickramasinghe, EntsL sent two informal email communications to the Center on August 18, 2018. On August 20, 2018, the Center sent a communication regarding possible settlement to the Parties. On the same day, the Complainants replied that they would like to continue the proceeding. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. On September 5, 2018, the Center notified the Parties that it will proceed to appoint the Panel.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on September 17, 2018. 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 First Complainant, Facebook, Inc., provides online social networking services. The Second Complainant, Instagram LLC, provides the online photo and video sharing social networking application. The Complainants own numerous trademark registrations in the terms "facebook" and "instagram" in many jurisdictions throughout the world, including the United States of America Trademark Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004) and the United States of America Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010).
The disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com> were registered by the Respondents, Lasantha Wickramasinghe, EntsL and Deepika Priyadarshinie EntsL, on August 13, 2012 and February 17, 2015, respectively. According to the evidence provided by the Complainants, the disputed domain names previously resolved to websites purporting to offer online proxy services for anonymous use of the Facebook and Instagram social networks, as well as featuring pay-per-click links at the time of filling of the Complaint. Currently, the disputed domain names do not resolve to any active websites.
The Complainants contend that the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com> are confusingly similar to the Complainants' registered trademarks FACEBOOK and INSTAGRAM.
The Complainants contend that the Respondents have no rights or legitimate interests in respect of the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com>.
The Complainants contend that the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com> were registered and are being used in bad faith.
The Complainants request that the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com> be transferred to the First Complainant and the Second Complainant respectively.
The Respondent Lasantha Wickramasinghe, EntsL, sent two informal email communications, via email, to the Center on August 18, 2018, which contain the following contents: "I'm sorry I missed your emails. I would like to cancel disputed domains. Please let me know how to do it as domains are currently under disputed and not allow me to delete", and "I missed previous emails from you. I would like to cancel or delete all disputed domains. I never used those domains for any kind of business against the trademark or illegal activity. Domains were using for provide access to Facebook and Instagram official websites where have restrictions from local networks."
No substantive Response was submitted by the Respondents.
The Panel notes that the Complainants request to consolidate the Complaints relating to the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com> and present their reasons.
According to the Rules, paragraph 10(e), a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The Panel notes that the Second Complainant is a wholly-owned subsidiary of the First Complainant and both Respondents share the same telephone number, associate with the same registrant organization and use the same domain name servers as shown in the WhoIs information of the disputed domain names. One of the Respondents, Lasantha Wickramasinghe, EntsL, in the email communications to the Center offered to cancel or delete "all disputed" domain names and stated that "those domains" are never used.
Given the above-mentioned matters, the Panel, in consideration of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0"), section 4.11.2, and Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, finds that the Complainants have a specific common grievance against the Respondents, who appears to have common control of the disputed domain names and the consolidation of the domain name disputes would be fair, equitable and procedural efficient to all Parties.
The Panel therefore upholds the Complainant's request for consolidation.
The Respondent Lasantha Wickramasinghe, EntsL sent two informal email communications to the Center on August 18, 2018 and offered to cancel or delete the disputed domain names.
After the Center sent a communication regarding possible settlement to the Parties, the Complainants replied that they would like the proceeding be continued.
In accordance with the Rules, paragraph 17(a), if, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.
Since the Complainants clearly decline to settle with the Respondents and wish to proceed to a decision, the Panel shall neither suspend nor terminate the proceeding for the Parties' settlement.
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark or service mark rights and the identity/confusing similarity between the disputed domain name and its trademark or service mark.
The Panel notes that, long before the registrations of the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com>, the Complainants had registered the word marks FACEBOOK and INSTAGRAM in the United States of America and many other jurisdictions in respect of a variety of Internet services and thus acquired relevant trademark rights.
The disputed domain names are <unblock-facebookproxy.com> and <unblockinstagramproxy.com>. Apart from the generic Top-Level Domain ("gTLD") suffix ".com", the disputed domain names consist of "unblock-facebookproxy" and "unblockinstagramproxy", which may apparently be read as "unblock", "facebook", "proxy" and "unblock", "Instagram", "proxy" respectively.
The Panel notes that the Complainants' registered marks FACEBOOK and INSTAGRAM are completely incorporated into the respective disputed domain names. The addition of the descriptive prefix "unblock" and suffix "proxy" to "facebook" and "instagram" does not avoid confusing similarity between the disputed domain names and the Complainants' marks.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainants' marks and that the Complainants have proven paragraph 4(a)(i) of the Policy.
The Complainants assert, and provide the evidence to demonstrate, that the Respondents are not a licensee of the Complainants, nor have the Respondents been otherwise allowed by the Complainants to make any use of the Complainants' marks.
The Respondents do not provide any information to the Panel asserting any rights or legitimate interests they may have in the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com>. Instead, the informal email communications from one of the Respondents confirms that the disputed domain names "were using for provide access to Facebook and Instagram official websites where have restrictions from local networks", which disclose that the Respondents were aware of the Complainants' marks as well as the related online services, and sought to provide unauthorized services. The Panel does not consider the Respondents' use of the disputed domain names to amount to a bona fide offering of goods or services within the meaning of the Policy.
On the basis of the Parties' submissions, the Panel finds that there is no evidence available that may prove that the Respondents have any rights or legitimate interests in the disputed domain names <unblock-facebookproxy.com> and <unblockinstagramproxy.com>.
Therefore, the Panel finds that the Complainants have proven paragraph 4(a)(ii) of the Policy.
The Complainants contend that the Respondents registered and are using the disputed domain names in bad faith. The Respondent replies that they "never used those domains for any kind of business against the trademark or illegal activity. Domains were using for provide access to Facebook and Instagram official websites where have restrictions from local networks."
The Panel notes that the First Complainant's FACEBOOK mark has been in use since 2004 and the Second Complainant's INSTAGRAM mark has been in use since 2010. The Respondent's email communications reveal that the Respondents registered and use the disputed domain names with the full knowledge of the Complainants' marks FACEBOOK and INSTAGRAM. The Panel also notes that the disputed domain names resolved to websites purporting to provide falsified proxy access services to the Complainants' official websites and featuring pay-per-click links.
The Panel finds that the Respondents' acts of intentional registrations of the disputed domain names that are confusingly similar to the Complainants' marks, and intentional use of the disputed domain names to attempt to attract, for commercial gain, Internet users to the websites offering unauthorized proxy access services to the Complainants' websites, together with the display of commercial links, are sufficient to prove that the Respondents deliberately intended create a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain names' websites or of the services offered on those websites. Given that the Complainants' marks FACEBOOK and INSTAGRAM are well known on the Internet, the Respondents obviously registered and use the disputed domain names to freeride and profit from the Complainants' reputation online.
The Panel therefore finds that the Respondents have registered and are using the disputed domain names in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainants have successfully proven paragraph 4(a)(iii) of the Policy.
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 <unblock-facebookproxy.com> be transferred to the First Complainant, Facebook, Inc. and disputed domain name <unblockinstagramproxy.com> to the Second Complainant, Instagram, LLC.
Dr. Hong Xue
Sole Panelist
Date: October 1, 2018