Facebook and Instagram retrieve infringing domains

Social media sites Facebook and Instagram have successfully reclaimed a host of infringing domains following a dispute at the World Intellectual Property Organization Arbitration and Mediation Center.

Of the disputed domains, 13 related to the Facebook trademark (two of which had a .co top-level domain, five with .com, three with .info and 3 with .org) and 12 related to the Instagram trademark (two of which had a .co top-level domain, four with .org, three with .com, two with .net, and one with .info).

The infringing domains were registered by Rafael Cuellar of California, through GoDaddy.com.

It was contended that the domains in question were confusingly similar to the “distinctive” trademarks by replicating them in their entirety, in an attempt to capitalise on the mass popularity of the two trademarks by allowing consumers to assume their affiliation with the social media giants.

Facebook has approximately 2.23 billion monthly active users globally. The company acquired Instagram in April 2012, which has since grown to attract 1 billion monthly active users, with over 95 million photos and videos shared per day.

Facebook further claimed that Cuellar had no legitimate legal rights or interests over the trademarks.

Cuellar failed to respond to the contentions.

Sole panellist Harrie Samaras found that the disputed domains had been registered in bad faith as it was “highly likely” that the respondent had previous knowledge of the trademarks.

Furthermore, it was identified that Cuellar had full intention of creating a likelihood of confusion among internet users as to Facebook and Instagram’s sponsorship, endorsement or affiliation with the domains.

Samaras concluded by ordering the transfer of the 13 domains relating to the Facebook trademark to Facebook, and the 12 domains relating to the Instagram trademark to be transferred to Instagram.