Facebook and Instagram win UDRP dispute concerning confusingly similar registered domain names in China
May 24, 2016Published by
On 10 May 2016, the Administrative Panel of the WIPO Arbitration and Mediation Center (the “Panel”) made its decision in relation to complaints filed by Facebook, Inc and Instagram, LLC concerning alleged infringements of their respective trade marks.
By way of background, Facebook is the registered owner of the trade mark “FACEBOOK”, which was first registered in the United States from 2006 with a claim to first use in commerce in 2004. The first registration in China for Facebook was in 2009.
Likewise, Instagram is the registered owner of the trade mark “INSTAGRAM”, which was first registered in the United States in 2012, with a claim to first use in commerce in 2010. Instagram have a pending application for the trademark “INSTAGRAM” in China.
Facebook and Instagram disputed 46 domain names which it said were confusingly similar to its trade marks such as “faecdook.com” and “iinstagram.com” and which redirected internet users to either dynamic advertising pages or to parking pages displaying commercial links which redirect to third party commercial websites.
Xiamen eName Network Co., Ltd and weiwei from China (the Respondents), the owners of these disputed domain names, argued that Facebook and Instagram are not well known in China because it is not possible to access their pages in China. The Respondents also argued that Instagram did not have a registered trade mark in China and that some of the domain registrations occurred prior to Facebook’s trade mark registration in China. On this basis they argued that they had not acted in bad faith when registering their domain names.
Nevertheless the Panel held that the domain registrations were “clearly made to ride on the coattails of the fame of the [Facebook and Instagram]”. It was noted that the websites under the disputed domain names are accessible worldwide and for the most part are in English. The Respondents were also not able to show any legitimate interest in the domain names as neither of them were commonly known by any of the disputed domain names despite most of them being registered 4 to 6 years ago.
The Panel held that the Respondents clearly knew of Facebook and Instagram when it registered the disputed domain names and that they were clearly seeking to attract Internet users around the world to their websites under the disputed domain names. Accordingly the Panel ordered all disputed domain names be transferred to Facebook and Instagram.