WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc., Instagram, LLC v. Mingde Wang

Case No. D2019-2600

1. The Parties

The Complainants are Facebook, Inc. (“the first Complainant”) and Instagram, LLC (“the second Complainant”), United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Mingde Wang, China, self-represented.

2. The Domain Names and Registrar

The disputed domain names <facebookdata.com> and <i̇nstagram.com> [xn--instagram-5jf.com] are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in regard to several domain names with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 24 and 25, 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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent sent email communications on November 4, 10, and 22. The Response was filed on December 1, 2019. The Complainants requested to suspend the proceeding to discuss a possible settlement with the Respondent on December 5, 2020 and further requested to extend the suspension period on January 10, 2020. The proceeding was accordingly suspended from December 6, 2019 to January 24, 2020. On January 23, 2020, the Complainants submitted a request for the reinstitution of the proceeding with respect to the disputed domain names.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 27, 2020. 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 leading providers of online social networking and mobile messaging applications having its <facebook.com> and <Instagram.com> websites ranked as the 6th and 29th top websites in the world (Annex 7 to the Complaint).

The first Complainant is the owner, amongst others, of the trademark FACEBOOK registered in the United States of America under No. 3122052, registered on July 25, 2006 and the second Complainant is the owner of the trademark INSTAGRAM registered in the United States of America under No. 4146057, registered on May 22, 2012 (Annex 15 to the Complaint).

The disputed domain names <facebookdata.com> and <i̇nstagram.com> [xn--instagram-5jf.com] were registered on January 1, 2017 and October 31, 2012. According to the Complainants and the evidence provided, the disputed domain name <facebookdata.com> resolved to a parked page displaying pay-per-click advertising and the disputed domain name <i̇nstagram.com> [xn--instagram-5jf.com] resolved to a webpage impersonating Windows and offering technical support services (Annexes 11 and 12 to the Complaint). Currently no active webpages resolve from the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainants assert to be the world’s leading providers of online social networking services and mobile messaging applications, actively promoting and using its FACEBOOK AND INSTAGRAM trademarks throughout the world.

The first disputed domain name, <facebookdata.com>, is, according to the Complainants, confusingly similar to the first Complainant’s notorious trademark, creating a likelihood of confusion, given that its trademark’s distinctive element is reproduced in it with the addition of the generic term “data” which is insufficient to distinguish the disputed domain name from the first Complainant’s trademark.

The second disputed domain name, <i̇nstagram.com> [xn--instagram-5jf.com], state the Complainants, has been registered using Punycode and can be displayed with non ASCII characters as <i̇nstagram.com> which visually looks the same as the second Complainant’s distinctive INSTAGRAM trademark, what past panels have already recognized as not preventing a finding of confusing similarity between the disputed domain name and a well-known trademark (Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211).

Moreover, the Complainants asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that:

(a) the Respondent is not a licensee of the Complainants, nor has he been otherwise allowed by the Complainants to make any use of the FACEBOOK and INSTAGRAM trademarks;

(b) the Respondent cannot assert that he is using, or has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy;

(c) the Respondent is not commonly known by the disputed domain names nor has he acquired any rights over the terms FACEBOOK and INSTAGRAM which are exclusively associated with the Complainants;

(d) given the overwhelming renown of the Complainants’ FACEBOOK and INSTAGRAM trademarks it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent (or a third party) other than the Complainants that would not be illegitimate, as it would inevitably result in misleading diversion; and

(e) the use made of the disputed domain names in connection with parked pages displaying pay-per-click advertisements and redirection to a website impersonating Windows and purporting to offer technical support services likely to disseminate malware or be used in phishing schemes cannot be considered a bona fide offering of goods or services.

As to the registration of the disputed domain names in bad faith the Complainants assert that the Respondent knew or should have known of the Complainants’ trademark rights at the time of the registration of the disputed domain names considering that they have acquired considerable goodwill and renown worldwide.

The Complainants further submit that the Respondent deliberately engaged in a pattern of bad faith conduct having registered a large number of domain names infringing upon the Complainants’ and third parties trademarks such as <whatsapp-promo.com>, <googlezone.com>, and <oculusv.com> (Annex 14 to the Complaint).

Thus, according to the Complainants, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainants’ trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the website is associated, endorsed or recommended by the Complainants, which is not true.

B. Respondent

In his formal Reply, the Respondent recognizes that the disputed domain names objectively infringed the Complainants’ trademark rights but claims not to have used them maliciously, and he agrees with the transfer of the disputed domain names to the Complainants.

6. Discussion and Findings

Firstly the Panel has to address the Respondent’s request of the voluntary transfer of the disputed domain names without findings of fact or conclusions as to the merits of the case under the UDRP.

A Panel may at its discretion order transfer of the domain name if the respondent has given its consent and unambiguous consent to transfer without findings under the Policy, paragraph 4(a). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Some panels have declined to grant a remedy solely on the basis of respondent’s consent where the complainant objects or because the panel finds a broader interest in reaching a substantive determination.

In the present case, the Respondent having registered other domain names that might relate to third parties rights this Panel finds a broader interest in reaching a substantive determination on the merits, given that those who choose to exploit the registration of domain names for profit – commonly referred to as domainers – should make the necessary preliminary trademark searches to avoid undue domain name registrations.

As the panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 stated, “[a]lthough there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”

Therefore, considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and analyze the three requisite elements under paragraph 4(a) of the Policy which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have 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.

The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to them, according to paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainants have established their rights in the FACEBOOK and INSTAGRAM trademarks (Annex 15 to the Complaint).

The addition of the generic term “data” is not sufficient to escape a finding of confusing similarity in the first disputed domain name and, as to the second disputed domain name, the use of Punycode which can be displayed with non ASCII characters as <i̇nstagram.com> which visually looks the same as the second Complainant’s distinctive INSTAGRAM trademark, leads this Panel to the conclusion that the disputed domain names are confusingly similar to the Complainants’ trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present case, the Respondent used the disputed domain name in connection with pay-per-click links to third party websites that may compete with the Complainant’s products and services what clearly cannot be considered a bona fide offering of goods or services.

In addition to that, the absence of any indication that the Respondent has been commonly known by the disputed domain names, or that he has acquired any registered trademarks or trade names corresponding to the disputed domain names, as well as the Complainants’ statement that no authorization, license or permission had been given for the Respondent to register and use the disputed domain names corroborate with the indication of the Respondent’s lack of rights or legitimate interests in the disputed domain names.

Moreover, the Panel notes that the Respondent has not asserted any rights or legitimate interests in respect of the disputed domain names in his Response. On the contrary, the Respondent has consented to the transfer of the disputed domain names, which corroborates with the lack of legitimate interests in the disputed domain names.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the use of the first disputed domain name in connection with a parked website that displays links or pay-per-click advertisements characterizes the Respondent’s intent of commercial gain by misleadingly diverting the first Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the first Complainant’s trademark. As to the past use made of the second disputed domain name to redirect Internet users to a website impersonating Windows and purporting to offer technical support services likely to disseminate malware or be used in phishing schemes cannot be considered a good faith use.

Such uses, in this Panel’s view, constitute an attempt to profit from the fame and goodwill associated with the Complainants’ trademarks, thus unfairly capitalizing on the FACEBOOK and INSTAGRAM trademarks by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain names are either connected, endorsed or authorized by the Complainants.

Two other relevant factors corroborate the finding of the Respondent’s bad faith conduct in this case: the pattern of bad faith conduct engaged by the Respondent in view of other domain name registrations made by him that infringe third parties well-known trademarks as well as the use of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it.

For the reasons above, the Panel finds that the Respondent’s conduct amounts to bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 <facebookdata.com> and <i̇nstagram.com> [xn--instagram-5jf.com] be transferred to the Complainants.

Wilson Pinheiro Jabur
Sole Panelist
Date: March 10, 2020