The Complainant is Facebook, Inc., United States of America (“United States”) and Instagram, LLC, United States, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Rafael Cuellar, Facebookfor Animal.cop, United States, self-represented.
The disputed domain names <facebooforanimal.com>, <facebookpizza.com>, <facebookpizza.info>, <facebookpizza.org>, <facebookspizza.com>, <facebookspizza.info>, <facebookspizza.org>, <faceboopizza.com>, <instagramforride.com>, <instagranforride.com>, <pizzafacebook.info>, <pizzafacebook.org>, <pizzasfacebook.com>, <pizzasfacebook.info>, and <pizzasfacebook.org> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2019. On July 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 1, 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 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 August 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. The Response was filed with the Center on August 28, 2019.
The Center appointed William F. Hamilton as the sole panelist in this matter on September 11, 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.
On September 11 and 19, 2019, the Respondent submitted to the Center emails that reiterated some of the legal contentions in his Response. Most of the September 11 and 19, 2019 emails consist of scurrilous content not relevant to these proceedings that will not be considered by the Panel.
Complainant Facebook, Inc. (“Facebook”) is one of the world’s leading providers of online social networking services. Facebook operates the website “www.facebook.com” which is one of the world’s most visited websites. Complainant Instagram LLC (“Instagram”) is a world-renown online photo and video sharing social network application. Instagram’s website is available at “www.instrgram.com” and is ranked as the 14th most visited website in the world. The Complainants, Facebook and Instagram, own the marks FACEBOOK and INSTAGRAM (the “Marks”), respectively. Each Complainant own numerous trademark registrations around the world incorporating the Marks. See e.g. Facebook, Inc. and Instagram, LLC v. Rafael Cuellar, WIPO Case No. D2018-2426.
The disputed domain names were registered by the Respondent between March 8, 2018, and December 22, 2018.
At the time of the filing of the Complaint, ten of the disputed domain names resolve to websites displaying the words “coming soon”. The disputed domain names <facebookpizza.com> and <faceboopizza.com> resolved to websites offering search tools “to uncover the best places to eat pizza in your town.” The disputed domain names <instagramforride.com> and <instagranforride.com> resolve to social network websites related to cars, bicycles, and other forms of transportation.
The Respondent registered the following domain names that were at issue in Facebook, Inc. and Instagram, LLC v. Rafael Cuellar, WIPO Case No. D2018-2426 and transferred to the Complainants:
<facebookanimal.co>, <facebookanimal.com>, <facebookanimal.info>, <facebookanimal.org>, <facebookforanimal.co>, <facebookforanimal.com>, <facebookforanimal.org>, <facebookforanimals.com>, <facebookmascots.com>, <facebooksforanimal.info>, <facebooksforanimals.com>, <facebooksforanimals.info>, <facebooksforanimals.org>, <instagramforaride.co>, <instagramforaride.org>, <instagramforcar.com>, <instagramforcar.net>, <instagramforcar.org>, <instagramforcars.com>, <instagramforcars.net>, <instagramforcars.org>, <instagramforride.co>, <instagramforride.info>, <instagramforride.org>, and <instagramsforcars.com>.
Additionally, the Respondent registered the domain names <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>and <instagramforaride.us> which were recovered by the Complainants in another proceeding.
The Respondent filed the following “Fictitious Business Name Statements” in 2018 with the City of Long Beach, California. The Respondent filed a fictitious name statement for “faceboopizza.com” on behalf of Facebook Pizza Enterprises. A fictitious name statement was filed by the Respondent for “Facebook Pizza Enterprise” on behalf of Facebook Pizza Enterprise. The Respondent filed a fictitious name statement for “facebooforanimal.com” on behalf of Facebook for Animal Corp. The Respondent filed a fictitious name statement for “Instagramforride.com” on behalf of the company “Instagram for Ride Corp.” These statement filings will be collectively referred to as the “fictitious name statements”.
The Respondent submitted a Certificate of Registration with the United States Copyright Office for visual art under the title “INSTAGRAMFORRIDE” with an effective registration date of December 10, 2018.
Facebook Pizza Enterprise and Facebook for Animal Corp. are registered as California, United States, domestic stock companies with the Agent of Service for Process listed as Rafael Cuellar with an address at Long Beach, California.
The Complainant asserts that the disputed domain names are confusingly similar to the Complainants’ Marks because the Respondent has used the Complainants’ Marks in their entirety (or with a single letter changed or omitted) followed or preceded by dictionary terms when composing the disputed domain names. The Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent was not known by the Marks nor conducted business under the Marks prior to the adoption of the disputed domain names. Finally, the Complainant asserts the disputed domain names were registered and are being used in bath faith as the Respondent was undoubtedly aware of the Complainant’s ownership of the Marks and the disputed domain names are being used or intended to be used to lure unsuspecting Internet users to the Respondent’s websites.
The Respondent asserts this proceeding is an “unfair “attempt by the Complainant to seize the disputed domain names. The Response mostly consists of irrelevant, self-serving assertions of persecution and victimization. However, beyond the Response’s vituperative comments and castigations, the Respondent appears to assert that the fictitious name statements filed with the City of Long Beach, California, United States, and the registration of artwork entitled “INSTAGRAMFORRIDE” with the United States Copyright Office demonstrates or establishes rights and legitimate interests in the disputed domain names and demonstrates good faith registration and use of the disputed domain names.
The Complainants have submitted a request to consolidation their respective claims again the Respondent pertaining to the disputed domain names. Instagram, LLC is a wholly owned subsidiary of Facebook, Inc. The Respondent has registered all the disputed domain names between May and December 2018 and, as a preliminary matter, this proceeding revolves around claims that the Respondent has used the Complainants’ registered Marks, or a confusingly similar version of the Marks, in conjunction with common dictionary terms to compose the disputed domain names. The disputed domain names were registered with the same Registrar. The Complainants are represented by the same counsel. The Respondent has not objected to consolidation and has proffered defenses common to the claims of both Complainants.
The Panel finds that the Respondent has engaged in conduct that has affected the Complainants in a similar fashion. The Panel further finds that it would be equitable and procedurally efficient to permit consolidation. Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd / weiwei, WIPO Case No. D2016-0409; Facebook, Inc. and Instagram, LLC v. Rafael Cuellar, WIPO Case No. D2018-2426.
Accordingly, the Complainants’ request for consolidation of the Complainants is granted.
The Panel finds that the disputed domain names are confusingly similar to the Complainants’ Marks.
The disputed domain names are confusingly similar the Complainants’ Marks because the disputed domain names contain the exact Mark (or the Marks altered by a single letter) preceded or followed by dictionary terms. For example, the disputed domain name <faceboopizza.com> omits the letter “k” from the Mark FACEBOOK and adds the dictionary term “pizza.” The disputed domain name <instagranforride.com> replaces the letter “m” in the Mark INSTAGRAM with an “n” and adds the words “for” and “ride”. Facebook, Inc. and Instagram, LLC v. Rafeal Cuellar, WIPO Case. No. D2018-2426. The variant generic Top-Level Domains in the disputed domain names do not prevent a finding of confusing similarity. Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.
The Complainants have met their burden of proof under paragraph 4(a)(i) of the Policy
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Prior to the use of the disputed domain names, the Respondent was not known by the Marks and did not conduct commercial business under the disputed domain names. The Respondent is not a licensee of the Complainant, nor has Respondent been otherwise allowed by the Complainant to use of the Complainant’s Marks. Moreover, under the circumstances of this case, Respondent’s passive holding of websites “coming soon” does not establish rights or confer legitimate interests in the disputed domain names. Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.
The Respondent’s filing of the fictitious name statements with the City of Long Beach, California, United States, do not establish any rights or legitimate interests under the Policy in the disputed domain names. The fictitious name statements are merely public notices identifying the actual business owner. The filing of a fictitious name statement does not immunize the fictitious name registrant against claims of wrongful conduct associated with adoption of the name or the conduct of the business. Similarly, the registration with the United States Copyright Office of unspecified artwork entitled “Instagramforride” does not create any rights or legitimate interests in the disputed domain names. The issue before this panel is not whether some visual art owned by the Respondent may be protected by United States copyright law. The issue before the Panel is whether the registration and use of the disputed domain names violates the Policy, and if the Respondent lacks rights or legitimate interests. The Complainant has established its case and there is no relevant evidence to rebut it.
The Complainants have met their burden of proof under paragraph 4(a)(ii) of the Policy
The Panel finds the disputed domain names were registered and used in bad faith.
The disputed domain names clearly attempt to trade on the Complainants’ well-known Marks. The Respondent has engaged in an extended pattern of abusive registrations that knowingly attempt to exploit the goodwill and reputation associated with the Complainant’s Marks. The Respondent obviously knew of Marks before registering the disputed domain names. It is beyond contest that the Respondent seeks to take advantage of these well-known brands for his own commercial purposes. Facebook, Inc. and Instagram, LLC v. Rafeal Cuellar, WIPO Case No. D2018-2426. Neither the Respondent’s fictitious name statements nor the Respondent’s filing of artwork entitled “Instagramforride” with United States Copyright Office diminish the Respondent’s bad faith registration and use of the disputed domain names.
The Complainants have met their burden of proof under 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:
(1) the disputed domain names <facebooforanimal.com>, <facebookpizza.com>, <facebookpizza.info>, <facebookpizza.org>, <facebookspizza.com>, <facebookspizza.info>, <facebookspizza.org>, <faceboopizza.com>, <pizzafacebook.info>, <pizzafacebook.org>, <pizzasfacebook.com>, <pizzasfacebook.info>, and <pizzasfacebook.org> be transferred to the Complainant Facebook, Inc.; and
(2) the disputed domain names <instagramforride.com>, <instagranforride.com> be transferred to Complainant Instagram LLC.
William F. Hamilton
Sole Panelist
Date: September 23, 2019