WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Perfect Privacy, LLC / Milen Radumilo, Hush Whois Protection Ltd., Contact Privacy Inc., Host Master, Transure Enterprise Ltd
Case No. D2019-0510
1. The Parties
The Complainant is Facebook Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Perfect Privacy, LLC, United States / Milen Radumilo, Romania, Hush Whois Protection Ltd., Seychelles, Contact Privacy Inc., Canada, Host Master, Transure Enterprise Ltd, United States.
2. The Domain Names and Registrars
The disputed domain names <espiarwhatsapp.com> and <facrlebook.com> are registered with Above.com; <benoculus.com> is registered with Blisternet, Inc.; <updatewhatsapp.com> is registered with Bonzai Domains, LLC; <fapcebook.com>, <whatsappthemes.com>, and <wwwinstagran.com> are registered with Communigal Communications Ltd.; <facebiiok.com> is registered with Cool Breeze Domains, LLC; <whatsappw.com> is registered with Cool River Names, LLC; <whatsappsininternet.com> is registered with Deep Sea Domains LLC; <facbooksupport.com> is registered with Domainroyale.com LLC; <facebork.com> and <ìnstagram.com> [xn--nstagram-11a.com] are registered with DomainSails.net LLC; <instagiram.com> is registered with Domaintimemachine.com LLC; <fotosparaperfildewhatsapp.com>, <whatsaph.com>, and <xhatsapp.com> are registered with Dynadot, LLC; <whatsappforpcss.com> is registered with Eagle Eye Domains, LLC; <a2zwhatsapp.com>, <coculus.com>, <descargar-whatsapp.net> <facebcebook.com>, <whatsapp-chat.com>, <whatsapp-kontakte.net>, <whatsapp-number.com>, <whatsappupgrade.com>, and <whatsapss.com> are registered with eNom, Inc.; <download-whatsapp-plus.com>, <girlswhatsappnumber.com>, and <webwhatsapps.com> are registered with GoDaddy.com, LLC; <apkwhatsapp.com>, <comoespiarwhatsapp.com>, <facebofk.com>, <instagramapp.com>, <instagramonfire.com>, <instagramtakipcihilesi.com><jasainstagram.com>, <ogwhatsapp.com>, <photowhatsapp.com>, <whatsapp-city.com>, <whatsappinstall.com>, <whatsappy.com>, <www-whatsapp.com> and <yowhatsapp.com> are registered with Key-Systems GmbH; <whatsappt.com> is registered with Leatherneckdomains.com, LLC; <whatsapap.com> is registered with Masterofmydomains.net LLC; <fbwebcams.net> and <fookacebook.com> are registered with MOBIKAPP Limited; <whatsapp-download-free.com> is registered with Mvpdomainnames.com LLC; <whatwhatsapp.com> is registered with Namefinger.com LLC; <facebofacok.com> and <whatsapphackz.com> are registered with Network Solutions, LLC; <whatsappsweb.com> is registered with Sitefrency.com LLC; <webwhtsapp.com> is registered with ThirdFloorDNS.com LLC; <telechargerwhatsapp.com> is registered with Touchdown Domains LLC; <ahatsapp.com>, <comnstagram.com>, <comoligarporwhatsapp.com>, <instagragram.com>, <latestwhatsapp.com>, <llnstagram.com>, and <whatsappvoicecalls.com> are registered with Tucows Inc.; <whatsappfreedownload.com> is registered with UdomainName.com LLC; <instagramme.com> is registered with White Alligator Domains, LLC (collectively the “Disputed Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”), with regard to the Disputed Domain Name <facbooksupport.com>, on March 5, 2019. On March 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2019, the Registrar Domainroyale.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 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 March 15, 2019, whereby it added 65 additional Disputed Domain Names to the Complaint.
On March 19, 2019, the Registrar Network Solutions, LLC transmitted by email to the Center, on behalf of itself and its registrar subsidiaries, its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 19, 2019, the Registrar Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. On March 19, 2019, the Registrar eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 20, 2019, the Registrar Above.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. On March 20, 2019, the Registrar Key-Systems GmbH transmitted by email to the Center its verification response confirming that the named Respondent is listed as the registrant and providing the contact details. On March 20, 2019, the Registrar Dynadot, LLC transmitted its verification response confirming the Respondent is listed as the registrant and providing the contact details. On March 26, 2019, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response confirming the Respondent is listed as the registrant and providing the contact details. On March 28, 2019, the Registrar Communal Communication Ltd. transmitted its verification response confirming the Respondent is listed as the registrant and providing the contact details. On May 7, 2019, the Registrar MOBIKAPP Limited transmitted its verification response confirming the Respondent is listed as the registrant and providing the contact details.
On May 9, 2019, the Center sent an email communication to the Complainant providing the further registrant and contact information disclosed by the Registrars and inviting the Complainant to submit an amended Complaint. The Complainant submitted a second amended Complaint on May 16, 2019, whereby it removed two Disputed Domain Names from the Complaint. On May 22, 2019, the Complainant submitted a third amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 May 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on July 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.
The due date for the Panel to forward its Decision to the Center was extended to July 25, 2019.
4. Factual Background
The first Complainant, Facebook Inc., is a corporation, based in Menlo Park, California, United States and a worldwide renowned provider of online social networking services.
Launched in 2004, with access originally restricted to Harvard University students, by the end of the year reached 1 million active users. The service quickly expanded to other universities and, by 2006, to anyone in the world with a valid email address, reaching 100 million users by August 2008, 500 million users by July 2010, and 1 billion users worldwide by September 2012. Today, the Facebook social media has more than 2 billion active users and 2.32 billion daily active users worldwide. Its website “www.facebook.com”, is currently ranked 3rd most visited website in the world and in Romania according to the web information company Alexa.
The Facebook application (available for mobile devices), in recent years was been ranked amongst the top “apps” in the market, with 1.74 billion mobile monthly active users and 1.15 billion mobile daily active users. According to App Annie’s Top Apps Ranking in 2018, such application is the most downloaded application in the world. In 2018 the FACEBOOK brand ranked 9 in Interbrand’s Best Global Brands report, with a total revenue pf USD 55,848 million and 37% increase year-over-year, developing over the years considerable reputation and goodwill worldwide in connection with a large number of goods and services and becoming one of the top rising brands both online and offline.
Reflecting its global reach (as shown in the sample WhoIs records in Annex 6 to the Complaint), the first Complainant is the owner of numerous domain names consisting of or including the term “Facebook”, for instance, <facebook.com>, <facebook.org> and <facebook.biz> as well as under country extensions such as <facebook.ca> (Canada), <facebook.in> (India), <facebook.com.ar> (Argentina), <facebook.be> (Belgium), <facebook.com.br> (Brazil), <facebook.cn> (China), <facebook.co> (Colombia), <facebook.eu> (European Union), <facebook.fr> (France), <facebook.de> (Germany), <facebook.hu> (Hungary), <facebook.it> (Italy), <facebook.pk> (Pakistan), <facebook.es> (Spain), <facebook.com.tr> (Turkey), <facebook.ua> (Ukraine) and <facebook.us> (United States).
The Complainant has also made substantial investments to develop a strong presence online by being active on the different social media forums. The first Complainant’s official page on “www.facebook.com”, for example, has over 207 million “likes”. In addition, it has over 14 million followers on “www.twitter.com”.
The second Complainant, Instagram, LLC, is one of the world’s leading online photo and video sharing social networking application. Since its launch on October 6, 2010, the Instagram application rapidly developed considerable renown worldwide, reaching 100,000 users in only one week, 500,000 users in less than a month, 1 million registered users in two months (by December 21, 2010), and over 10 million registered users by September 2011, less than a year after it was launched.
Following its acquisition by the first Complainant in April 2012, the Instagram application reached over 100 million monthly active users by February 2013, 150 million active users by September 2013, and 500 million users by June 2016. Today, the INSTAGRAM application has over 800 million monthly active users and its website “www.instagram.com” is ranked the 16th most visited website in the world and 19th in Romania, according to web information company Alexa. Instagram has also consistently ranked amongst the top applications (or apps) available for mobile devices, and has been the recipient of numerous awards, including App of the Year in 2011 from Apple Inc.
The third Complainant, WhatsApp Inc., is a provider of one of the world’s most popular mobile messaging applications (or apps). Founded in 2009 and acquired by the first Complainant in October 2014, WhatsApp has become one of most popular mobile applications in the world, with over 1 million users by the end of 2009, 200 million users in April 2013, 500 million users in April 2014, 800 million users in April 2015 and 900 million users worldwide in September 2015. Today, the WhatsApp application has over 3 billion monthly active users worldwide (as of the fourth quarter of 2018). WhatsApp is amongst iTunes’ top 30 apps. The WhatsApp main website is available at “www.whatsapp.com”.
The fourth Complainant, Facebook Technologies, LLC (formerly known as Oculus VR, LLC), is a virtual reality technology company founded in 2012 that developed Oculus Rift, a groundbreaking virtual reality head-mounted display that uses advanced display technology that enables the sensation of presence and immersion. Acquired by the first Complainant in March 2014, Oculus rapidly acquired and developed considerable goodwill and renown worldwide, in connection with virtual reality software and apparatus, including headsets and helmets. The Oculus main website is available at “www.oculus.com”.
The four Complainants will be collectively referred to thereafter as “the Complainant”. The Complainant is the owner, amongst others, of the following trademark registrations:
- European Union trademark registration No. 008981383 for FB (word mark), filed on March 23, 2010, and registered on August 23, 2011, in class 45;
- United States trademark registration No. 4659777 for FB (word mark), filed on July 14, 2008, and registered on December 23, 2014, in class 35;
- United States trademark registration No. 3041791 for FACEBOOK (word mark), filed on February 24, 2005, and registered on January 10, 2006 (first use in commerce in February 4, 2004), in class 38;
- International trademark registration No. 1075094 for FACEBOOK (figurative mark) registered on July 16, 2010, in classes 9, 35, 36, 38, 41, 42, 45;
- United States trademark registration No. 4146057 for INSTAGRAM (word mark), filed on September 19, 2011, and registered on May 22, 2012 (first use in commerce on October 6, 2010), in class 9;
- International trademark registration No. 1129314 for INSTAGRAM (figurative mark), registered on March 15, 2012, in classes 9 and 42;
- International trademark registration No. 1085539 for WHATSAPP (word mark) registered on May 24, 2011, in classes 9 and 38;
- United States trademark registration No. 3939463 for WHATSAPP (figurative mark), filed on April 1, 2009, and registered on April 5, 2011 (first use in commerce on February 24, 2009), in class 42;
- United States trademark Registration No. 4891157 for OCULUS (figurative mark), filed on December 13, 2013, and registered on January 26, 2016 (first use in commerce March 27, 2013), in class 28;
- International trademark registration No. 1219324 for OCULUS (word mark), registered on June 12, 2014, in class 28.
The Complainant, as shown in Annex 6 to the Complaint, is the owner of numerous domain names consisting of, or including, the terms “Facebook”, “Fb”, “Instagram”, “Whatsapp” and “Oculus”.
The Disputed Domain Names were registered between July 10, 2014 and August 28, 2018.
The majority of the Disputed Domain Names have been redirected to dynamic advertising websites, mostly containing sponsored links, targeting the Complainant’s trademarks and displaying terms such as “Facebook”, “Facebook Apps”, “Facebook App”, “Instagram”, “Instagram users”, “Instagram log in”, “descargar whatsapp spy”, “whatsapp messenger”, and “whatsapp chat”.
The remaining Disputed Domain Names either resolve or resolved to blank pages displaying the information “too many requests”, to a simple image composed of punctuation marks, or did not resolve at all, whilst others contain a hyperlinked message inviting users to make an offer to acquire the Disputed Domain Names.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the terms FACEBOOK, FB, INSTAGRAM, WHATSAPP and OCULUS are exclusively associated with the Complainant and that all search results obtained by typing these terms in Google’s search engine available at “www.google.com” and “www.google.ro” refer to the Complainant.
The Complainant informs the Panel that, on January 22, 2019, and February 4, 2019, two cease and desist letters were sent by the first Complainant to the Respondent concerning the Disputed Domain Name <facbooksupport.com>, but the Respondent failed to reply.
The Complainant highlights that the Disputed Domain Name <facbooksupport.com> redirects Internet users to a website displaying commercial links targeting the Complainant’s trademark, such as “Facebook”, “Facebook Apps”, “Facebook App”, etc. and that (as shown in Annex 9 to the Complaint), upon clicking on such links, Internet users are redirected to third party commercial websites.
The Complainant also submits that the Disputed Domain Name <facbooksupport.com> was being offered for sale on the website associated with the Disputed Domain Name <facbooksupport.com>and that the hyperlinked message “Click here to buy this domain” displayed at the right of the website, directs to a Sedo auction platform, inviting users to make an offer to acquire the Disputed Domain Name <facbooksupport.com> for 688 USD.
The Complainant originally filed the Complaint against the above-mentioned Disputed Domain Name <facbooksupport.com>. However, further to the Center’s disclosure of the identity of the underlying registrant of the above mentioned Disputed Domain Name, the Complainant amended the Complaint twice in light of the newly disclosed identity of the Respondent and conducted research on his details which led to the addition of 63 other Disputed Domain Names inducing the Complainant’s trademarks and registered between July 10, 2014 and August 28, 2018.
The Complainant notes that some (though not all), of the remaining 63 Disputed Domain Names, incorporate the Complainant’s FACEBOOK, FB, WHATSAPP, INSTAGRAM, and OCULUS trademarks in their entirety, while the remaining Disputed Domain Names consist mostly of obvious misspellings of the Complainant’s trademarks.
In this respect, the Complainant observes how the Respondent has inconsequentially attempted to create confusion with the Complainant’s trademarks, by using generic terms such as: “support”, “espiar”, “me”, “update”, “internet”, “for pcc”, “chat”, “upgrade”, “update”, “descargar”, “kontakte”, “number”, “download”, “plus”, “web”, “como”, “app”, “on fire”, “jasa”, “takipci hilesi”, “photo”, “install”, “city”, “free”, “hack”, “ligar por”, “latest”, “voice calls”, “telecharger”, “themes”, “fotos para perfil de”, and “girls”, in some of the 64 Disputed Domain Names, or deliberately making obvious misspellings, which do nothing however, to diminish the confusing similarity as in any case, the Complainant’s trademarks are not only clearly recognizable but also a dominant component of the Disputed Domain Names.
Furthermore, the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names, as it is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy for the following reasons:
i) the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its trademarks, in a domain name or otherwise;
ii) the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had 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, as some of the Disputed Ddomain Names are dynamically pointing to advertising websites or to parking pages with sponsored links (some of which target the Complainant’s trademarks). Such use cannot be considered bona fide as the Respondent is clearly seeking to unduly profit from the Complainant’s goodwill for its own financial gain;
iii) the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Names, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, as some of the Disputed Domain Names are pointing to dynamically changing websites mainly containing commercial pay-per-click (“PPC”) links, from which the Respondent (or a third party) is undoubtedly obtaining financial gain;
iv) the remaining Disputed Domain Names are not currently resolving, and the Respondent does not appear to have used these Disputed Domain Names in connection with active websites at any time since their creation;
v) the Respondent is not commonly known by the Complainant’s trademarks, as the trademarks and the rights deriving thereof, are exclusively associated with the Complainant.
Lastly the Complainant contends that given its renown and goodwill worldwide, the Respondent would be in no position to argue that he had no knowledge of the Complainant’s trademark rights at the time of registration of the Disputed Domain Names, between 2014 and 2018, particularly because the Complainant registered its trademarks long before the Disputed Domain Names were created.
Therefore, the Complainant submits that the Respondent was well aware of the Complainant’s rights even before he registered the 64 Disputed Domain Names and that he registered the Disputed Domain Names in order to prevent the Complainant from reflecting its trademarks in corresponding domain names.
The Complainant further asserts that the fact that the Respondent purposely registered the Disputed Domain Names, using various misspellings of the Complainant’s trademarks, shows that the Respondent was undoubtedly aware of the Complainant’s rights at the time of registration.
Moreover, the fact that the Respondent, as shown with the Disputed Domain Name <facbooksupport.com>, was offering for sale some of the Domain Names, would clearly demonstrate that the Respondent most likely registered the Disputed Domain Names with the purpose of selling them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs incurred at the time of registration.
The Complainant concludes that given its highly distinctive and famous trademarks, it is unlikely that the Respondent could have registered the Disputed Domain Names with legitimate purposes in mind.
Furthermore, the Complainant submits that the various uses of the Disputed Domain Names, including resolving to inactive webpages or PPC links, constitute bad faith use of the Disputed Domain Names, pursuant to 4(b) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
6.1. Preliminary Procedural Issue: Identification of Proper Respondent and Consolidation of Multiple Respondents and Domain Names
The Complaint was originally filed against Perfect Privacy LLC, which is the proxy service selected by the actual registrant to shield his identity and contact details in the Whois records of the initial Disputed Domain Name <facbooksupport.com>.
The Complainant filed the Complaint against the Disputed Domain Name <facbooksupport.com>. However, further to the Center’s disclosure of the identity of the underlying registrant of the above mentioned Disputed Domain Name, which was registered through a privacy service, the Complainant amended the Complaint twice and conducted research on its details, which led to the addition of 63 other Disputed Domain Names to the Complaint.
According to the Registrar verifications, most of the concerned Registrars disclosed the full data of the underlying registrant according to their records, identified as Milen Radumilo. Where the name was not disclosed, the Complainant found that the registrant details are still masked by privacy protection services, though the historical WhoIs records indicated Milen Radumilo as being the registrant.
Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“Where 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. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)”.
In view of the circumstances of the case, the Panel finds that the Disputed Domain Names are under common control of a single individual or entity (“the Respondent”) and that consolidation of the Disputed Domain Names is appropriate for the following reasons:
i) all of the Disputed Domain Names are, or were according to the historical WhoIs records provided by the Complainant and not challenged by the Respondent, registered in the name of the same individual named Milen Radumilo;
ii) all of the Disputed Domain Names follow a similar naming pattern, i.e., the Disputed Domain Names comprise one or another of the Complainant’s trademarks and company names, or a variation thereof, and/or with the addition of various generic terms, letters, numbers, hyphens or registered under the Punycode system;
iii) all 64 Disputed Domain Names were registered under “.com” and “.net” generic Top-Level Domains (“gTLDs”), which are the most common gTLDs;
iv) all of the Disputed Domain Names registered under privacy, apart from <espiarwhatsapp.com>, remained on the same servers after the registrant data became hidden;
v) the majority of the Disputed Domain Names, at the time of filing, redirect to dynamic advertising websites. For the most part, these websites contain pay-per-click (PPC) links, some of them targeting the Complainant’s trademarks.
6.2. Substantive Issues
A. Identical or Confusingly Similar
As highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel finds that the Complainant has established rights over the trademarks FACEBOOK, FB, WHATSAPP, INSTAGRAM, and OCULUS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 6 to the Complaint.
The Panel finds that the 64 Disputed Domain Names are confusingly similar to the trademarks FACEBOOK, FB, WHATSAPP, INSTAGRAM, and OCULUS as they reproduce the trademark either in part or in its entirety with the sole addition of the words: “support”, “espiar”, “me”, “update”, “internet”, “for pcc”, “chat”, “upgrade”, “update”, “descargar”, “kontakte”, “number”, “download”, “plus”, “web”, “como”, “app”, “on fire”, “jasa”, “takipci hilesi”, “photo”, “install”, “city”, “free”, “hack”, “ligar por”, “latest”, “voice calls”, “telecharger”, “themes”, “fotos para perfil de”, and “girls”, which can be disregarded when comparing the similarities between a domain name and a trademark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,
WIPO Case No. D2014-0206; and Zions Bancorporation v. Mohammed Akik Miah,
WIPO Case No. D2014-0269).
In addition, the Panel acknowledges the fact that comparing the Complainant’s marks to the Disputed Domain Names with reference to all 64 Disputed Domain Names, it should be taken into account the well-established principle that the gTLD may be excluded from consideration as being merely functional component of a domain name. See i.e. Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,
WIPO Case No. D2000-1770.
Moreover, where the relevant trademark is recognizable within the Disputed Domain Names, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0). Furthermore, as stated in Section 1.9 of the WIPO Overview 3.0, “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
Therefore, the Panel finds that the Complainant has proven that the Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with the WIPO Overview 3.0 , section 2.1 , it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455; Banco Itau S.A. v. Laercio Teixeira,
WIPO Case No. D2007-0912; Accor v. Eren Atesmen,
WIPO Case No. D2009-0701).
There is no evidence from which the Panel could infer the Respondent has right over the Disputed Domain Names, or that the Respondent might be commonly known by the Disputed Domain Names.
Furthermore, the Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Also, as highlighted above, out of the 64 Disputed Domain Names, the majority of the Disputed Domain Names are pointed to dynamic advertising websites mostly containing sponsored links, targeting the Complainant’s trademarks, whilst others are pointed to mere registrar parking pages, blank pages displaying the information “too many requests”, to a simple image composed of punctuation marks, or to pages containing a hyperlinked message inviting users to make an offer to acquire the Disputed Domain Names.
Therefore, the Panel finds that the Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names without intention to misleadingly divert the consumers or to tarnish the Complainant’s trademark.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Panel finds that, in light of the registration dates of the Disputed Domain Names, of the Complainant’s prior use of the trademarks FACEBOOK, FB, WHATSAPP, INSTAGRAM, and OCULUS in connection with the Complainant’s services and of the virtual identity of the Disputed Domain Names with the Complainant’s trademarks, the Respondent very likely registered the Disputed Domain Names having the Complainant’s trademarks in mind.
The Panel is also of the opinion that the Respondent’s registration of the Disputed Domain Names, confusingly similar to the Complainant’s trademarks FACEBOOK, FB, WHATSAPP, INSTAGRAM, and OCULUS, does not amount to a mere coincidence since, as indicated above, some of the websites published at the Disputed Domain Names are used as mere parking pages of the concerned Registrar, while others have been found to also contain PPC links related to the Complainant’s trademarks.
The circumstances of the case therefore suggest that the Respondent did not register and use the Disputed Domain Names for a legitimate purpose without intent to mislead Internet users and trade upon the Complainant’s trademarks, but rather to trade off the Complainant’s marks for profit, as also shown by the Respondent’s offer for sale of some of the Disputed Domain Names.
Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the Disputed Domain Names are so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the Disputed Domain Names were registered with a deliberate intent to create an impression of an association with the Complainant.
With reference to the issue of the non-use of some of some of the Disputed Domain Names by the Respondent, the Panel finds that in this case the passive holding infers bad faith. As also established in a number of prior cases the concept of bad faith use in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. Furthermore, the Panel notes that a number of the Disputed Domain Names resolve to hyperlinked messages inviting users to make an offer to acquire such Disputed Domain Names, which in these circumstances is additional evidence of bad faith.
The Panel deems also paragraph 4(b)(ii) applicable in this case since the Respondent has registered the Disputed Domain Names in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since they have registered other domain names incorporating registered trademarks.
The Panel also finds that typosquatting constitutes additional evidence of bad faith (Barry D. Sears, Ph.D. v. YY / Yi Yanlin,
WIPO Case No. D2007-0286, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,
WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller,
WIPO Case No. D2006-0536 (stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”).
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 listed below
<ahatsapp.com>
<apkwhatsapp.com>
<a2zwhatsapp.com>
<benoculus.com>
<coculus.com>
<comnstagram.com>
<comoespiarwhatsapp.com>
<comoligarporwhatsapp.com>
<descargar-whatsapp.net>
<download-whatsapp-plus.com>
<espiarwhatsapp.com>
<facbooksupport.com>
<facebcebook.com>
<facebiiok.com>
<facebofacok.com>
<facebofk.com>
<facebork.com>
<facrlebook.com>
<fapcebook.com>
<fbwebcams.net>
<fookacebook.com>
<fotosparaperfildewhatsapp.com>
<girlswhatsappnumber.com>
<instagiram.com>
<instagragram.com>
<instagramapp.com>
<ìnstagram.com> [xn--nstagram-11a.com]
<instagramme.com>
<instagramonfire.com>
<instagramtakipcihilesi.com>
<jasainstagram.com>
<latestwhatsapp.com>
<llnstagram.com>
<ogwhatsapp.com>
<photowhatsapp.com>
<telechargerwhatsapp.com>
<updatewhatsapp.com>
<webwhatsapps.com>
<webwhtsapp.com>
<whatsapap.com>
<whatsaph.com>
<whatsapp-chat.com>
<whatsapp-city.com>
<whatsapp-download-free.com>
<whatsappforpcss.com>
<whatsappfreedownload.com>
<whatsapphackz.com>
<whatsappinstall.com>
<whatsapp-kontakte.net>
<whatsapp-number.com>
<whatsappsininternet.com>
<whatsappsweb.com>
<whatsappt.com>
<whatsappthemes.com>
<whatsappupgrade.com>
<whatsappvoicecalls.com>
<whatsappw.com>
<whatsappy.com>
<whatsapss.com>
<whatwhatsapp.com>
<wwwinstagran.com>
<www-whatsapp.com>
<xhatsapp.com>
<yowhatsapp.com>
be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: July 25, 2019
