Facebook, Inc. / Instagram, LLC v. Rafael Cuellar
Claim Number: FA1810001813399
Complainant is Facebook, Inc. / Instagram, LLC (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Rafael Cuellar (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2018; the Forum received payment on October 24, 2018.
On October 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@facebookforanimal.us, postmaster@facebookanimal.us, postmaster@instagramforride.us, postmaster@instagramforaride.us. Also on October 29, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
In this proceeding there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant Facebook, Inc. claims that Complainant Instagram, LLC is its subsidiary and that each party has rights in the FACEBOOK and/or INTRAGRAM trademarks. The Panel therefore finds in light of the above, and the fact that there is no response objecting to consolidating and continuing the proceedings as captioned, that the two Complainants (herein elsewhere referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of, such that they shall be treated as if a single entity. See Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd /weiwei, D2016-0409 (WIPO May 10, 2016) ("The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. The Second Complainant is a subsidiary of the First Complainant and they have common interests."); see also, Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).
A. Complainant
Complainant contends as follows:
Complainant is the world’s leading provider of online social networking services. Complainant uses the FACEBOOK mark in connection with a social media platform, and uses the INSTAGRAM mark in connection with an online photo and video sharing social networking application.
Complainant has rights in the FACEBOOK and INSTAGRAM marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names are identical or confusingly similar to Complainant’s mark as they each contain one of Complainant’s marks in its entirety and add a generic term (“for,” “animal,” “a,” and/or “ride”) along with the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any use of the resolving webpages associated with the disputed domain names.
Respondent registered and uses the <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names in bad faith. Respondent registered multiple domain names infringing on Complainant’s trademark rights, which alone indicates bad faith. Further, Respondent fails to make any use of the resolving webpages associated with the at-issue domain names. Finally, Respondent had knowledge of Complainant’s marks prior to registering the domain names as Complainant's trademarks are highly distinctive and renowned throughout the world, including in the United States of America where the Respondent resides, and have been continuously and extensively used for many years, having rapidly acquired considerable goodwill and renown worldwide.
B. Respondent
Respondent contends via emails to the Forum as follows:
Respondent has a legitimate business in California named “Facebook for Animal.”
The domain names were registered to reflect Respondent’s business.
Complainant does not have exclusive rights to use “face” or “book” on the internet.
Complainant has rights in the FACEBOOK and INSTAGRAM marks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent holds the domain names inactively.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO registrations for FACEBOOK and for INSTAGRAM is sufficient to demonstrate its rights in each mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
Respondent’s <facebookforanimal.us> and <facebookanimal.us> domain names each contain Complainant’s FACEBOOK trademark. The term “for animal” is suffixed to Complainant’s mark in the former domain name, and the term “animal” is suffixed in the later. Each domain name concludes with the “.us” top-level domain name. Similarly, Respondent’s <instagramforride.us>, and <instagramforaride.us> domain names each contain Complainant’s INSTAGRAM trademark followed by either the term “for ride” or “for a ride,” and each also ends with the top level domain name “.us.” The differences between each of the at-issue domain names and Complainant’s relevant trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore the Panel concludes that Respondent’s <facebookforanimal.us> and <facebookanimal.us> domain names, as well as its <facebookforanimal.us> and <facebookanimal.us> domain names are each confusingly similar to one of Complainant’s trademarks. See, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and a top-level domain).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademarks in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Rafael Cuellar.” The record before the Panel contains no credible evidence that might otherwise tend to prove that Respondent is commonly known by any the at-issue domain names. Respondent’s claim that it registered the FACEBOOK related domain names to reflect its business name is unsubstantiated as the record offers no corroborating evidence to support such claim. Even if true, the bald claim does not support the Panel’s finding that Respondent is commonly known by either of the FACEBOOK related domain names. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by any of the at-issue domain names. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent holds the at-issue domain names inactively. Using, or perhaps more appropriately not using, the at-issue domain names in this manner is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Although, Respondent claims to have registered the FACEBOOK domain names to reflect its business even if Respondent uses the domain name in connection with its business, using another’s famous trademark as part of your business name is certainly not a bona fide use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names pursuant to Policy ¶ 4(a)(ii).
Respondent’s <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names were each registered and used in bad faith. As discussed below without limitation, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith regarding each domain name under paragraph 4(a)(iii) of the Policy.
First, Respondent registered multiple domain names containing Complainant’s well-known trademarks. Respondent thereby exhibits a pattern of bad faith registration under Policy ¶ 4(b)(ii) which suggests Respondent’s bad faith domain name registration and use in the instant case. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Additionally and as mentioned above regarding rights and legitimate interests, Respondent fails to make any active use of the at-issue domain names. Inactively holding a confusingly similar domain name evinces bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent registered <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> knowing that Complainant had trademark rights in FACEBOOK and INSTAGRAM. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks. In fact, the fame of Complainant’s marks make it inconceivable to find that Respondent may have been ignorant of Complainant’s relevant trademarks at the time it registered the <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names. Respondent’s assertion that Complainant does not have an exclusive right to use “face” or “book” on the internet may be true, but Complainant’s trademark is FACEBOOK and thus Respondent’s claim is irrelevant to Respondent’s good faith use of its FACEBOOK laden domain names. Therefore it is clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <facebookforanimal.us>, <facebookanimal.us>, <instagramforride.us>, and <instagramforaride.us> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2018
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