WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2019-2347

1. The Parties

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

The Respondent is Osbil Technology Ltd, Turkey and Cyprus.

2. The Domain Names and Registrars

The disputed domain names <facebookprofil.com>, <facebookx.xyz>, <freeinstagram.me>, <instagrambayilik.com>, <instagramedyam.com>, <instagramhackers.xyz>, <instagramhelpcenters.co>, <instagrampolicy.com>, <turkinstagram.ltd>, <whatsapphaberhatti.com>, and <whatsappnumaram.xyz> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). The disputed domain name <mail-instagram.com> is registered with Realtime Register B.V. (the “Registrar”). Hereinafter collectively referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. The Complaint was originally filed in relation to the disputed domain names and the <vipinstagramtakipci.com> domain name. On September 26, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 26, 2019, the registrar NameSilo, LLC transmitted by email to the Center its verification response in regarding the <vipinstagramtakipci.com> domain name. On September 27, 2019, the Registrar Realtime Register B.V. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On the same date, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com 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 sent an email communication to the Complainant on October 11, 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 an amended Complaint on October 16, 2019, removing the <vipinstagramtakipci.com> domain name from the dispute.

The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on November 26, 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 Complainants are Facebook Inc. (“Facebook”) and its wholly owned subsidiaries, Instagram, LLC (“Instagram”) and WhatsApp Inc. (“WhatsApp”) (cf. Annex 10 to the Complaint).

The First Complainant is a leading online social networking service, which was founded in 2004. It has more than 1 billion users worldwide, including almost 40 million in Turkey. The First Complainant is the owner of the trademark FACEBOOK, used around the world. It holds many trademark registrations worldwide, e.g., United States Trademark Registration No. 3122052 (registered on July 25, 2006), and Turkish Trademark Registration No. 2008 20994 (registered on March 10, 2009), (cf. Annex 15 to the Complaint). It further owns and operates a large number of domain names like <facebook.com> and <facebook.com.tr>.

The Second Complainant provides online photo and video sharing services. These services are provided through its online platform, which primarily consists of a mobile application and a website. Users of the Second Complainant’s services can upload, edit, and share images and videos and are able to follow shared content by other users. Based on uncontested information provided in the case record, the Second Complainant reached over 1 billion people using the Second Complainant’s services monthly. Alone in Turkey, where the Respondent is located, the Second Complainant has 34 million active users. It is the owner of the trademark INSTAGRAM, which is registered in a large number of jurisdictions. For instance, the Second Complainant is the owner of the United States Trademark Registration No. 4146057, registered on May 22, 2012. The Second Complainant is further the owner of the Turkish Trademark Registration No. 2013 74099, registered on May 20, 2015. The registered trademarks provide protection for various goods and services, in particular International Classes 9, 38, 41, and 42 (cf. Annex 15 to the Complaint). It holds and operates its main website at “www.instagram.com”, which is ranked as one of the most visited websites worldwide.

The Third Complainant provides a service to exchange messages via smartphones. Based on uncontested information provided in the case record, the Third Complainant has 1.5 billion monthly users worldwide. It is the owner of the word and figurative mark WHATSAPP, which is registered in a large number of jurisdictions. For instance, the Third Complainant is the owner of the United States Trademark Registration No. 3939463, registered on April 5, 2011. The Third Complainant is further the owner of the Turkish Trademark Registration No. 2011 70159, registered on December 28, 2012. The registered trademarks provide protection for various goods and services, in particular International Classes 9, 38, and 42 (cf. Annex 15 to the Complaint). The Third Complainant holds and operates its main website at “www.whatsapp.com”.

The registration dates of the disputed domain names are as follows:

The Respondent is a company located in Turkey and Cyprus. Notwithstanding the difference in the postal address, the Panel accepts the Respondent as a single legal person as the disputed domain names are all registered to the same entity with the same telephone number and email address.

As evidenced by the Complainant, the disputed domain name <facebookx.xyz> redirects Internet users to a website featuring the Complainant’s INSTAGRAM trademark as the tab name and giving the same impression as the Complainant’s official login page (cf. Annex 9 to the Complaint). The disputed domain name <whatsapphaberhatti.com> is pointing to a website in Turkish language indicating that the disputed domain name is for sale (cf. Annex 12 to the Complaint). Also, some of the disputed domain names were (previously) used in connection with different phishing schemes like sending phishing emails (cf. Annex 8 to the Complaint), whereas other disputed domain names have yet not been actively used (cf. Annex 13 to the Complaint).

Finally, the Respondent was already involved in previous UDRP disputes. All of the previous cases indicated in the Complaint were decided in favor of the respective complainant by ordering the transfer of the domain names from the Respondent to the respective complainants.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its FACEBOOK, INSTAGRAM, and WHATSAPP trademarks.

Furthermore, the Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that that the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Issues

The Complainants have requested consolidation of the Complainants on the basis that the Second and Third Complainant are wholly owned subsidiaries of the First Complainant and they have a common grievance against the Respondent.

The Panel considers that it is fair and equitable in the circumstances of the case to order the consolidation as requested (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview 3.0.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of various FACEBOOK, INSTAGRAM, and WHATSAPP trademarks, which are registered and well known in many jurisdictions.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. All disputed domain names comprise the FACEBOOK, INSTAGRAM, or WHATSAPP trademark in its entirety, combined with a descriptive term in the English or Turkish language, such as “free”, “policy”, “helpcenters”, or “medyam” and “numaram”, which means “my media” and “my number” in the English language.

As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. Particularly, the mere addition of dictionary terms does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s trademarks within the disputed domain names.

Further, the Panel finds that the disputed domain names, which are all confusingly similar to the Complainant’s trademarks, carry a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain names. Particularly, the Panel does not see sufficient basis for assessing any kind of bona fide offering of goods or services by the Respondent, particularly as the Respondent is using or at least previously used some of the disputed domain names in connection with phishing schemes (e.g. by redirecting Internet users to a fake login page or sending phishing emails, cf. Annexes 8 and 9 to the Complaint).

Hence, the Panel concludes that the Respondent does not have a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

C. Registered and Used in Bad Faith

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users in order to obtain private information and/or to freeride on the goodwill of the Complainant’s trademarks, for illegitimate purposes, particularly for the following reasons.

At the date of registration of the disputed domain names, the Respondent was obviously well aware of the Complainant’s well-known trademarks.

Furthermore, the way of using the Complainant’s trademark on websites linked to some of the disputed domain names (cf. Annex 8 and 9 to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademark as the distinctive part of the disputed domain names to mislead Internet users in bad faith and to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s trademarks.

Also, the Respondent offered the disputed domain name <whatsapphaberhatti.com> for sale, as evidenced in Annex 12 to the Complaint. In view of the Panel, this is a further indication of the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s trademarks.

Additionally, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain names in bad faith.

The fact that most of the disputed domain names are currently inactive does not change the Panel’s findings in this respect.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, the disputed domain names were registered and are being used in bad faith and the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 disputed domain names, <facebookprofil.com>, <facebookx.xyz>; <freeinstagram.me>,<instagrambayilik.com>, <instagramedyam.com>, <instagramhackers.xyz>, <instagramhelpcenters.co>,<instagrampolicy.com>, <mail-instagram.com>, <turkinstagram.ltd>, <whatsapphaberhatti.com> and <whatsappnumaram.xyz> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: December 10, 2019