The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Bryant Parker of Primrose Lane, Wisconsin, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2018, 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 August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on September 7, 2018. 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 Complainant is widely known for its highly successful Instagram online photo and video sharing social networking application. The Complainant launched the Instagram application on October 6, 2010. As a result of the Instagram application’s popularity and exceptional growth, the Complainant had over one million registered users within two months, and now hosts over 700 million monthly and 400 million daily active users, with more than 95 million photos and videos shared per day.
The Complainant owns trademark registrations for INSTAGRAM in multiple jurisdictions, including:
United States, U.S. Reg. No. 4146057, filed on September 19, 2011, and registered on May 22, 2012 (first use in commerce October 6, 2010);
United States, U.S. Reg. No. 4170675, filed on September 19, 2011, and registered on July 10, 2012 first use in commerce October 6, 2010);
European Union, EUTM No. 014493886, filed on August 20, 2015, and registered on December 24, 2015;
International Trademark No. 1129314, registered on March 15, 2012.
The disputed domain name was initially registered on January 14, 2011. Based on reverse WhoIs data research provided by the Complainant, it is apparent that the Respondent was not the original registrant of the disputed domain name, but rather that the Respondent acquired the disputed domain name at some time after May 17, 2016. The disputed domain name currently resolves to an error page, but the Complainant has submitted evidence that the disputed domain name has been used by the Respondent in connection with a phishing scheme. The Respondent used the disputed domain name to send an email to an Instagram user. The email contained a link to a web page that cloned the Complainant’s Instagram landing page. Were the Instagram user to have logged on to the fake website with his or her credentials, the Respondent could have obtained the Instagram user’s confidential account information. Fortunately, the Instagram user filed a fraud alert. The Complainant also has submitted evidence that appears to implicate the Respondent in a separate Instagram related scam involving a hacker forum. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM mark. The Complainant observes that the disputed domain name incorporates the Complainant’s mark its entirety, and asserts that the inclusion in the disputed domain name of the letter “n” following “instagram” constitutes typosquatting. The Complainant maintains there is a consensus view among UDRP panels that a domain name consisting of an obvious and intentional misspelling of a trademark will be found confusingly similar when the misspelled trademark remains the dominant or principal component of the domain name.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark, and the Complainant asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainant points to the Respondent’s use of the disputed domain name with an illegitimate phishing scam seeking to obtain the confidential account information of Instagram users for commercial gain. The Complainant asserts that the Respondent deliberately designed the fake website to convey to Instagram users the false impression they had been redirected to the Complainant’s website. The Complainant submits that the Respondent has not been commonly known by the disputed domain name and has not made a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and has used the disputed domain name in bad faith. The Complainant maintains that the INSTAGRAM mark is inherently distinctive and well known throughout the world, and asserts that the Respondent would have been aware of the Complainant’s INSTAGRAM mark when registering the disputed domain name sometime after May 17, 2016. The Complainant contends that the Respondent’s use of the disputed domain name to point to a fake Instagram landing page dispels any doubt as to the Respondent’s awareness of the Complainant rights when registering the disputed domain name. The Complainant submits that the Respondent deliberately registered a domain name that is an intentional misspelling of the Complainant’s mark in order to cause confusion amongst Instagram users as to the source to the Respondent’s fake landing page, which clearly constitutes bad faith. The Complainant further contends that the Respondent provided false contact information when registering the disputed domain name, which according to the Complainant is further evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM mark, in which the Complainant has established rights through registration and use of the mark in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s INSTAGRAM mark is clearly recognizable in the disputed domain name.2 The addition of the letter “n” following “instagram” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark, and is evocative of typosquatting. TLDs, in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s INSTAGRAM mark. The record reflects that the Respondent nonetheless has registered and used the disputed domain, which is confusingly similar to the Complainant’s mark, in furtherance of a fraudulent phishing scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant and the Complainant’s INSTAGRAM mark when registering the disputed domain name. In the absence of any explanation by the Respondent, the Panel considers in all likelihood that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, through impersonation of the Complainant in furtherance of a fraudulent phishing scheme.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s INSTAGRAM mark in mind when registering the disputed domain name. The record evinces that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom. In light of the attendant circumstances, the Respondent’s registration and use of the disputed domain name (including typosquatting) smacks of opportunistic bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 17, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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