WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Osbil Technology, Osbil Technology Ltd

Case No. D2018-2906

1. The Parties

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

Respondent is Osbil Technology, Osbil Technology Ltd of Mersin, Turkey and Famagusta, Cyprus.

2. The Domain Names and Registrars

The disputed domain names <facebookbegenihilesi.com>, <facebookbegenihilesi.net>, <instagramhilecim.com>, and <instagramtakipcim.com> are registered with Realtime Register B.V.; whereas the disputed domain names <facebookhesapsatisi.com>, <facebookk.top>, <facebooktipsideas.life>, <facebookwhatsap.com>, <fbinstadownload.com>, <followerinsta.com>, <instafollowersfast.top>, <instagramadresim.com>, <instagramaktivasyon.com>, <instagrambegenin.top>, <instagramcenters.top>, <instagramdestek.pro>, <instagramhilesi.org>, <instagramhizmetlerim.com>, <instagramhouse.xyz>, <instagramn.xyz>, <instagramonay.org>, <instagramotobegeni.pro>, <instagrampanel.pro>, <instagramsecurity.info>, <instagramsepeti.com>, <instagram-support.top>, <instagramtakipcihilesi.biz>, <instagramtakipcihilesi.top>, <instagramtakipcikasma.co>, <instagramtakipcin.org>, <instagramtakipcisatinal.net>, <instagramtakipcisatinal.top>, <instagramtakipciyeri.com>, <instagramtakiphilesi.com>, <instagramucuztakipci.com>, <seslifacebook.com>, and <whatzepp.xyz> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (cumulatively referred to as the “Registrar”) (“the Domain Name/s”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2018. On December 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 21, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is 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 Respondent of the Complaint, and the proceedings commenced on December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. Respondent submitted informal email communications but did not submit any formal response. Accordingly, the Center notified the Parties on January 17, 2019 that it would proceed to panel appointment.

The Center appointed Clive L. Elliott QC as the sole panelist in this matter on February 1, 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

This dispute concerns the following 37 Domain Names:

5. Parties’ Contentions

A. Complainants

First Complainant (Facebook, Inc.) submits that given that Second Complainant (Instagram, LLC) and Third Complainant (WhatsApp Inc.) are its wholly-owned subsidiaries, they have a sufficient common legal interest in the trade marks reproduced in the Domain Names in order to file a joint Complaint (hereinafter jointly referred to as “Complainants”). In addition, Complainants are the target of common conduct by Respondent, consisting of a pattern of reproducing their respective trade marks (or their variation) in a domain name, which affects their individual rights and interests in a similar fashion.

Complainants state that they are the world’s leading providers of online social networking services and mobile messaging applications and have rapidly developed considerable renown and goodwill worldwide, including in Turkey/Cyprus where Respondent is based.

Complainants have secured ownership of numerous trademark registrations in the terms FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP in many jurisdictions around the world, including in Turkey and the European Union.

Complainants states that they are also owners of numerous domain names consisting of or including the terms FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP either under generic extensions or under numerous country code extensions. Furthermore, the search results obtained by typing the terms FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP into Google’s search engine exclusively refer to Complainants.

Complainants note the following regarding each of the Domain Names:

Complainant adds that in addition to the aforementioned 37 Domain Names, according to historic WhoIs records, Respondent has also previously owned a large number of domain names infringing Complainant's Marks, including but not limited to <acheterdesfollowersinstagram>, <apps-instagram.top>, <faceboõk.com>, <facebookbayici.com>, <facebookbayilik.net>, <facebookdealersystem.com>, <facebookhilesi.com>, <facebookhizmetleri.biz>, <facebookhizmetleri.com>, <facebookhizmetlerim.com>,<facebookislem.com>, <instagramazalmayantakipci.com>, <instagrambayisi.net>, <instagrambegenisatinal.biz>, <instagrambegenitakip.com>, <instagramtakipcii.net>, <instagramteams.xyz >, <whatisip.org>, <whatsappdurumlari.top> and <whatsapptoplumesaj.com>.

Complainants state that they also own numerous trademark registrations in the terms FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP around the world, including but not limited to the following:

- Turkish trademark No. 2017 47534, FACEBOOK, registered on November 28, 2017;
- European Union trademark No. 004535381, FACEBOOK, registered on June 22, 2011;
- United States trademark No. 3122052, FACEBOOK, registered on July 25, 2006;
- European Union trademark No. 008981383, FB, registered on August 23, 2011;
- United States trademark No. 4659777, FB, registered on December 23, 2014;
- Turkish trademark No. 2013 74099, INSTAGRAM, registered on July 31, 2015;
- European Union trademark No. 012111746, INSTAGRAM, registered on March 6, 2014;
- United States trademark No. 4146057, INSTAGRAM, registered on May 22, 2012;
- Chilean trademark No. 1213661, INSTA, registered on July 20, 2016;
- Malaysian trademark No. 2015069514, INSTA, registered on September 8, 2016;
- Turkish trademark No. 2015 103320, WHATSAPP, registered on April 24, 2017;
- European Union trademark No. 009986514, WHATSAPP, registered on October 25, 2011;
- United States trademark No. 4083272, WHATSAPP, registered on January 10, 2012;
- European Union figurative trademark No. 012111753, registered on March 7, 2014;
- United States figurative trademark No. 5351388, registered on December 5, 2017;

Complainants submit that they have therefore established rights in the terms FACEBOOK, FB, INSTAGRAM, INSTA and WHATSAPP (“Complainants’ Marks”).

Complainants assert that the Domain Names, except for the Domain Name <whatzepp.xyz>, incorporate Complainants’ Marks in their entirety. With regard to the Domain Name <whatzepp.xyz>, it is submitted that the term “whatzepp” is phonetically and visually similar to Complainant’s WHATSAPP trademark and is therefore confusingly similar.

Complainants state that Respondent is not a licensee of Complainants, nor has it been otherwise allowed by Complainants to make any use of Complainants’ Marks.

Complainants assert that Respondent is unable to demonstrate rights or legitimate interests in the Domain Names and Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services.

Complainants point out that twelve of the Domain Names (<instagramsepeti.com>, <instagramtakiphilesi.com>, <facebookhesapsatisi.com>, <followerinsta.com>, <instagramhilesi.org>, <instagramtakipcikasma.co>, <instagramucuztakipci.com>, <instagramadresim.com>, <instagramtakipcim.com>, <instagramtakipcin.org> , <instagramhilecim.com>, and <instagramhizmetlerim.com>) are currently pointing or previously pointed to websites allowing Internet users to purchase Instagram and Facebook “followers/likes" or to obtain them for free, provided that these users have disclosed either their personal information (e.g. the telephone number and the email address) for the purpose of creating an account or their account details (e.g. the user name and the password) in exchange for free “followers/likes”. Complainants suggest that this evidenced that these Domain Names are being or have been used in connection with a phishing scam that sought to illegitimately collect the personal data or confidential account information of Instagram/Facebook users for commercial gain.

Likewise, it is submitted that the current warning pages associated with the Domain Names <facebookk.top> and <instagramcenters.top> strongly imply that these Domain Names were previously used for conducting fraudulent activities and thus exclude any bone fide use.

Furthermore, it is argued that the fact that the websites currently or previously associated with the Domain Names <instagramtakiphilesi.com>, <instagramtakipcikasma.co> and <instagramtakipcim.com> display Complainant's distinctive figurative trademarks and either as a favicon or as the background of the website cannot constitute a bona fide offering of goods or services as Respondent deliberately designed the associated websites to give the false impression to internet users that they were being redirected to websites affiliated with or endorsed by the Complaint.

With regard to the Domain Names <instagramtakipcisatinal.top>, <instagrambegenin.top>, and <instagramtakipcihilesi.top>, the fact that these three domain names, which incorporate the Complainants’ well-known INSTAGRAM trademark, are used to point to websites purporting to resell the Domain Names cannot constitute bona fide use under the Policy.

Complainants go on to argue that the fact that the Domain Name <instagramtakipciyeri.com> is currently being used to point to a parking page containing various sponsored links cannot represent a bona fide offering of goods or services under the Policy as the Respondent is clearly seeking to capitalize on the Complainants’ reputation and goodwill by attracting Internet users to its website.

Neither can Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Domain Names. The current or previous use of the Domain Names in connection with phishing scams will undoubtedly exclude any legitimate noncommercial or fair use. Likewise, the use of the Domain Names to point to webpages either for resale of the Domain Name or with sponsored links cannot be considered as noncommercial. In any event, the fact that these Domain Names falsely suggest affiliation with Complainants by incorporating Complainants’ Marks so as to confuse Internet users will generally exclude any possible fair use.

Complainants assert that Respondent has no rights or legitimate interests in respect of the Domain Names. That is, because Complainants’ Marks are inherently distinctive and well-known throughout the world and have rapidly acquired considerable goodwill and renown worldwide, including in Turkey/Cyprus.

Complainant points out that given their renown and goodwill worldwide, it would be inconceivable for Respondent to argue that it did not have knowledge of Complainants’ Marks at the time of registration of the Domain Names between 2014 and 2018.

Furthermore, the fact that a good number of Domain Names are pointing or previously pointed to websites purportedly selling or providing for free Instagram or Facebook “followers/likes” is evidence of Respondent’s awareness of Complainants at the time of registration.

Complainants therefore submit that Respondent registered the Domain Names in full knowledge of Complainants’ rights.

Complainants further submit that the Respondent has engaged in a pattern of conduct of registering a large number of domain names infringing upon Complainants’ trademark rights, including but not limited to the 37 Domain Names, for the purpose of preventing Complainant from reflecting its trademarks in corresponding domain names.

Finally, given its inherently distinctive trademarks, Complainants submit that Respondent could not have chosen the Domain Names for any reason other than to take unfair advantage of Complainants’ goodwill and reputation. Complainants therefore submit that Respondent registered the Domain Names in bad faith.

It is submitted that Respondent is using the Domain Names to intentionally attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainants’ Marks as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

The Respondent submitted informal email communications without any substantive content but did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

A. Complainant Consolidation

Given that the three commercial entities comprising Complainants are closely related companies – Instagram, LLC and WhatsApp Inc. being wholly owned subsidiaries of Facebook, Inc, the Panel is satisfied that they have sufficient common legal interest in the trade marks reproduced in the Domain Names in order to file a joint Complaint. Further, Complainants are justified in asserting that they appear to be the target of common conduct by Respondent. That is, a pattern of reproducing their respective trademarks, or variations thereof in a domain name, and that this impacts on their individual rights and interests in a similar fashion.

For these reasons, the Panel is satisfied that the Complaint is properly brought together by the Complainants.

B. Respondent Identity

In its email communications the entity identified by the Registrar as the registrant of the Domain Names indicates that it registers domain names on behalf of its clients. At least one apparent client, Mustafa Tatar, communicated with the Center.

Respondent is defined as “the holder of a domain-name registration against which a complaint is initiated”, and the Registrar identified the Respondent as the relevant registrant. Therefore, all other things being equal, Osbil Technology/Osbil Technology Ltd is correctly identified as Respondent. The question is whether an agency arrangement such as apparently utilized here might impact this.

In theory a named respondent might seek to contend that a third party is the “beneficial registrant”. In such scenario, it would be incumbent on the respondent to adequately demonstrate that another party or parties should be so named. In this regard, the Panel notes that paragraph 3.7.7.3 of the 2013 Registrar Accreditation Agreement (RAA) states:

“Any Registered Name Holder that intends to license use of a domain name to a third party is nonetheless the Registered Name Holder of record and is responsible for providing its own full contact information and for providing and updating accurate technical and administrative contact information adequate to facilitate timely resolution of any problems that arise in connection with the Registered Name. A Registered Name Holder licensing use of a Registered Name according to this provision shall accept liability for harm caused by wrongful use of the Registered Name, unless it discloses the current contact information provided by the licensee and the identity of the licensee within seven (7) days to a party providing the Registered Name Holder reasonable evidence of actionable harm.”

Prior UDRP panels have considered the applicability of paragraph 3.7.7.3 in the context of privacy/proxy service providers, and have generally agreed that such service providers may be responsible for the submission of a UDRP response unless there is timely disclosure of underlying registrant information. See e.g., Monster Energy Company v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2018-2817. See also section 4.4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In any event, in such circumstances, UDRP panels have held that the registrant as listed in the WhoIs is a properly-named Respondent but that the submissions of other interested parties may be considered for purposes of the panels’ decision. See The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp., WIPO Case No. D2010-2180.

The Panel finds the principles espoused in consolidation cases may also be useful when considering situations such as the present. Section 4.11.2 of the WIPO Overview 3.0 states that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”. The Panel also recalls that there are certain benefits, obligations, and repercussions flowing from the registration of a domain name on behalf of another.

In this particular case, neither Respondent nor any other interested party has put forward satisfactory evidence to show that Respondent in fact registers and/or holds domain names on behalf of other parties, let alone any satisfactory argument as to why it should not be the named Respondent.

Accordingly, the Panel finds that Osbil Technology/Osbil Technology Ltd is the proper and only Respondent for this UDRP decision comprising 37 disputed domain names. At the same time, the Panel will consider the statements made by its apparent client, Mustafa Tatar.

C. Identical or Confusingly Similar

Complainants have respectively established that they have rights in Complainants’ Marks, namely FACEBOOK, FB, INSTAGRAM, INSTA, and WHATSAPP. Complainants have done so by showing extensive registration of the relevant trademarks comprising Complainants’ Marks and by virtue of extensive use of the trademarks in the course of trade.

Further, Complainants have shown that they have extensive reputation and goodwill in Complainants’ Marks.

The Domain Names, with the exception the Domain Name <whatzepp.xyz>, incorporate Complainants’ Marks in their entirety. In the case of the Domain Name <whatzepp.xyz>, the term "whatzepp" is self-evidently phonetically and visually similar to Complainant's WHATSAPP trademark.

The Domain Names reproduce Complainants’ Marks, or phonetic variations thereof, plus the addition of one or more descriptive words. It is of no moment whether these descriptive words are in English or Turkish. They do not remove the otherwise confusing similarity between the Domain Names and Complainants’ Marks.

Respondent makes no attempt to refute these assertions and arguments.

It is found that:

a) Complainants have rights in respect of Complainants’ Marks.

b) The Domain Names are each confusingly similar to Complainants’ Marks.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

D. Rights or Legitimate Interests

Respondent has no apparent rights or legitimate interests in the Domain Names; nor has it shown that Complainants have permitted or authorised Respondent to use Complainants’ Marks.

In addition, there is no evidence that Respondent is known by the Domain Names, nor that it is making a legitimate offering of goods or services under or by reference to the Domain Names, or any of them.

Respondent has engaged in a range of activities, all of which involve some form of registration and/or use of Complainants’ Marks. These activities vary considerably and include: use of the Domain Name in a manner which resembles the original trademark or website (see for example item 1 in table above, on pages 3 – 6 of decision, referred to as “the Table”), current passive use (item 4 of Table), misuse of Complainants’ figurative trademark and former logo (item 5 of Table), pointing to a parking page with sponsored links (item 17 of Table), pointing to webpages in Turkish offering the Domain Names for sale (items 20 and 21 of Table), and pointing to a webpage containing a message suggesting there is a “deceptive site ahead” (item 28 of Table).

In the absence of any attempt to refute Complainant’s allegations and a clear pattern of behavior, the Panel concludes that Respondent is involved in misuse of Complainants’ Marks in a range of ways and that this is likely to lead members of the public into accessing various websites believing that they are operated or authorised, directly or indirectly, by Complainants, contrary to the fact.

The Panel is satisfied that Respondent has no rights or legitimate interests in the Domain Names and accordingly that the second element of the Policy has been met.

E. Registered and Used in Bad Faith

Complainant submits that Respondent registered the Domain Names in full knowledge of Complainants’ rights. The Panel accepts that given a number of the Domain Names are pointing or previously pointed to websites purportedly selling or providing for free Instagram or Facebook “followers/likes” is evidence of Respondent's awareness of Complainants at the time of registration.

Given the large number of Domain Names the subject of this Complaint, the Panel is satisfied that Respondent has engaged in a pattern of conduct of registering a large number of domain names infringing upon Complainants’ trademark rights.

Given the overall circumstances, the Panel finds that Respondent registered the Domain Names in bad faith and that Respondent is using the Domain Names in bad faith, including to attract Internet users to its or its associates’ websites and in so doing to confuse those users as to the true origin of the goods or services being offered.

The third element of the Policy has been 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 Domain Names <facebookbegenihilesi.com>, <facebookbegenihilesi.net>, <instagramhilecim.com>, <instagramtakipcim.com> ,<facebookhesapsatisi.com>, <facebookk.top>, <facebooktipsideas.life>, <facebookwhatsap.com>, <fbinstadownload.com>, <followerinsta.com>, <instafollowersfast.top>, <instagramadresim.com>, <instagramaktivasyon.com>, <instagrambegenin.top>, <instagramcenters.top>, <instagramdestek.pro>, <instagramhilesi.org>, <instagramhizmetlerim.com>, <instagramhouse.xyz>, <instagramn.xyz>, <instagramonay.org>, <instagramotobegeni.pro>, <instagrampanel.pro>, <instagramsecurity.info>, <instagramsepeti.com>, <instagram-support.top>, <instagramtakipcihilesi.biz>, <instagramtakipcihilesi.top>, <instagramtakipcikasma.co>, <instagramtakipcin.org>, <instagramtakipcisatinal.net>, <instagramtakipcisatinal.top>, <instagramtakipciyeri.com>, <instagramtakiphilesi.com>, <instagramucuztakipci.com>, <seslifacebook.com>, and <whatzepp.xyz> be transferred to the Complainant.

Clive L. Elliott
Sole Panelist
Date: February 14, 2019