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 Abdunnur Rustem, Global Taekwondo Federation of Baku, Sabail, Azerbaijan. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, 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 of the registrant.
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”).
The Center received an informal email communication from the Respondent on September 13, 2018.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any formal response. On October 15, 2018, the Center notified the Parties that the Center will proceed to Panel Appointment.
The Center appointed Tommaso La Scala as the sole panelist in this matter on October 30, 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 a renown online photo and video sharing social networking application. The Complainant’s application has over 800 million monthly active users and its website is the 13th most visited website in the world.
According to the evidence submitted by the Complainant, the latter has obtained several registrations for the trademark INSTAGRAM, namely:
− United States Trademark Registration No. 4146057, registered on May 22, 2012;
− United States Trademark Registration No. 4170675, registered on July 10, 2012;
− European Union Trademark Registration No. 014493886, registered on December 24, 2015;
− International Trademark Registration No. 1129314, registered on March 15, 2012.
Likewise, the Complainant has multiple domain names and websites consisting of – or containing – the trademark INSTAGRAM.
The Domain Names and were registered on November 29 2017 and June 6, 2018. At the time of filing, the first one was pointing to a parking page (although in the past was connected to a website enabling users to download photos and videos from Instagram), while the second was resolving to a website containing a tutorial on how to download Instagram photos and videos.
The national and international trademark registrations of the Complainant were issued prior to the registration of the Domain Names. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the mark INSTAGRAM in which it has rights. The Complainant submits evidence of various trademark registrations for INSTAGRAM, as well as proof of its worldwide fame.
The Complainant affirms that is confusingly similar to its trademark because it fully incorporates the trademark INSTAGRAM, with the addition of the generic term “db”, which would be insufficient to prevent a finding of confusing similarity (see Golden Goose S.p.A v. GGDBSE Inc.,WIPO Case No. D2017-1295).
As for , the Complainant believes that it consists of a misspelling of the Complainant’s INSTAGRAM trademark, with the substitution of the letters “in” with the letter “s”. As underlined in many WIPO UDRP decisions concerning domain names very similar to the one at issue, this would be an evidence of typosquatting.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed to make any use of the Complainant’s trademark. According to the Complainant, the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. The Complainant affirms that is not currently resolving to an active website and that such passive holding shall not constitute a bona fide offering of goods and services under the Policy, especially taking into account the fact that the Respondent was previously using (and is currently using ) to resolve to websites allowing Internet users to download Instagram photos or videos, which does not constitute a bona fide offering of goods or services.
The Complainant asserts that the Domain Names were registered and were being used in bad faith. According to the Complainant, the Respondent registered the Domain Names in full knowledge of the Complainant’s distinctive and well-known trademark. In particular, the Complainant contends that the Respondent is using the Domain Names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy. Furthermore, the fact that currently points to a webpage displaying commercial banners lead to believe that the Respondent is obtaining financial gain, seeking to take advantage of the Complainant’s renown in order to attract traffic to its website and increase his revenues. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established its registered rights in the INSTAGRAM trademark.
The Domain Name exactly reproduces the Complainant’s trademark, with the mere addition of letters “db”. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates a complainant’s trademark in its entirety. The addition of the common, descriptive and non-distinctive terms and/or letters (such as the ones at issue) and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to avoid a finding of confusing similarity.
The Domain Name is a misspelled version of the trademark INSTAGRAM. However, the Panel believes that such mark is clearly recognizable in this domain name. Actually, the substitution of the letters “in” with the letter “s” does not serve to dispel the confusing similarity of the Domain Name with the Complainant’s mark, and is rather evocative of typosquatting.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel believes the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Names exactly reproducing its trademarks. The Respondent did not respond nor provide any evidence that it is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. In fact, the Respondent is not making any apparent use of the Domain Names at all. The Panel concludes that the Respondent has not used or demonstrated preparations to use the Domain Names 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 Domain Names.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Domain Names have been registered and are being used in bad faith.
The Panel notes that the trademark INSTAGRAM is well-known and given its renown in several countries – including Azerbaijan, where the Respondent is domiciled – the Panel concludes that the Respondent must have been aware of the Complainant’s trademark and that it registered the Domain Names comprising (i) an exact reproduction and (ii) a typo variation of the Complainant’s trademark in bad faith.
As a matter of fact, a quick search on Google for INSTAGRAM would have revealed to the Respondent that all the results retrieved are strictly related to the Complainant and its trademark.
On the contrary, it is rather clear that the Respondent was aware of the Complainant’s business and trademark at the time of registration of both the Domain Names, as resolved to a website containing a tutorial on how to download Instagram photos and videos.
With no reasonable explanation provided by the Respondent, the Panel believes that the latter registered the Domain Names with the purpose of exploiting the Complainant’s renown mark.
Having regard to all of the relevant circumstances in this case, and in the absence of any clarification filed by the Respondent, the panel finds that the respondent was using this Domain Names in bad faith in accordance with 4 (b) (iv) of the policy.
The Panel therefore finds that the Complainant has satisfied the requirement under 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 Domain Names and be transferred to the Complainant.
Tommaso La Scala
Sole Panelist
Date: November 12, 2018
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