The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Joker Bey, Jokerdayi of Ankara, Turkey (the “First Respondent”) and Omer Ulku, Takipcizevki of Amasya, Turkey (the “Second Respondent”), (cumulatively referred to as the “Respondent”). 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 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 December 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2018.
The Center appointed Cherise Valles as the sole panelist in this matter on January 10, 2019. 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 world-renowned online photo- and video-sharing social networking application. Launched in 2010 and acquired by Facebook in 2012, the Complainant has 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. It is one of the fastest growing social media platforms in the world. The Complainant’s website is ranked the 16th most visited website in the world and the 15th most visited in Turkey (where the Respondent is based). The Complainant’s mobile application is available in over 31 languages. In 2018, it was the sixth most downloaded application in the world and the fourth most downloaded in Turkey.
The Complainant has registered numerous domain names consisting of the term INSTAGRAM, including but not limited to the following: , , and .
The Complainant has also made substantial investments to develop a strong presence online by being active on different social media forums, including on Facebook, Twitter, LinkedIn, and Google+. For instance, currently the Complainant’s official Facebook page has around 60.1 million followers on Twitter.
Previous UDRP panels have recognized the strength and renown of the Complainant’s INSTAGRAM and INSTA trademarks, and ordered respondents to transfer domain names incorporating such terms to the Complainant. See, e.g., Instagram, LLC v. InstagramBadge, LLC,WIPO Case No. D2018-1956; Instagram, LLC v. kwanyeongkim,WIPO Case No. D2018-1708, and Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700.
The Complainant owns a number of trademarks in jurisdictions around the world for the term INSTA, including the following:
- Chile trademark No. 1213661 for INSTA, registered on July 20, 2016 in class 9;
- Malaysia trademark No. 2015069514 for INSTA, registered on September 8, 2016 in class 9; and
- Philippines trademark No. 506617 for INSTA, registered on May 18, 2017 in class 9.
The Complainant also owns a number of trademarks for its distinctive camera image trademark, which is used on its official website and mobile application, including the following:
- United States trademark No. 87035950, registered on December 5, 2017, in class 25.
The disputed domain name was registered on June 18, 2018 and the disputed domain name was registered on November 24, 2017.
Prior to the filing of the Complaint, the Complainant had already filed a complaint under the Policy against the Second Respondent in connection with the domain names and . The former resolved to a website similar to the Complainant’s log-in page, where Internet users were invited to provide their account information for the purpose of “verifying” their accounts. Pursuant to that complaint, the two domain names were ordered by a previous UDRP panel to be transferred to the Complainant. See Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700.
The Respondent is also connected with three other domain names, , and , which have been used to conduct similar phishing activities. For example, the domain name was previously used to resolve to a website which was highly similar to the one associated with the domain name as described above. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain names are identical to the Complainant’s registered trademark, INSTA, in light of the fact that they wholly incorporate the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain names.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain names have been registered and are being used in bad faith.
- The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain names are identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names were registered and are being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Consolidation of Respondents
Pursuant to paragraphs 3(c) and 10(e) of the Rules, complaints against multiple respondents may be consolidated in a single UDRP proceeding when the relevant domain names or websites are under common control, and the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
The Complainant argues that these proceedings should be consolidated as the registrant details for the disputed domain names reveal the same contact telephone number, similar email addresses, and other similarities in the physical address, Registrar and naming pattern.
The Panel finds that the Complainant has demonstrated that the disputed domain names are under common control and that the consolidation of the Complaint would be fair and equitable to all Parties.
Accordingly, the Panel accepts the Complainant’s request for consolidation. B. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of multiple registrations worldwide for the trademark INSTA, as indicated in Section 4 above.
The disputed domain names incorporate the Complainant's INSTA trademark in its entirety. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it may be sufficient to establish identity or confusing similarity for the purpose of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The addition of non-distinctive generic terms, such as “verify” and “pro follow”, should not prevent a finding of confusing similarity. See, e.g., Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700.
Previous UDRP panels have also held that the Top-Level Domain “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.
The Panel therefore finds that the Complainant has established the first element under the Policy. C. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain names. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. The Respondent has not satisfied this burden.
The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s INSTA trademarks in any manner. Previous panels have held that the lack of such prior authorization is sufficient to establish a prima facie case regarding a respondent's lack of rights or legitimate interests in the disputed domain name. See The Coca-Cola Company v. ICU Agency,WIPO Case No. D2008-1851. There is no evidence that the Respondent has ever been commonly known by the name of the disputed domain names, particularly given the Complainant's notoriety and the fact that INSTA (the commonly recognized abbreviation for INSTAGRAM) is an inherently distinctive trademark that is widely considered to be exclusively associated with the Complainant. The Respondent does not own any trademarks that are identical or similar to the Complainant’s INSTA marks.
The Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. Previous UDRP panels have held that the blatant use of another’s mark in a domain name used to divert Internet traffic cannot constitute a “legitimate use” in connection with a bona fide offering of goods or services. See Williams-Sonoma, Inc. v. Zhao Jiafei,WIPO Case No. D2014-0938.
The Respondent must have been aware of the Complainant’s rights in the INSTA marks. The disputed domain name previously resolved to a website that prominently displayed the Complainant's camera image trademark and mimicked the typeface and layout of the Complainant's official log in page. Such website displayed text regarding the process of users verifying their account details in order to obtain a ‘verified’ icon on their Instagram account. This suggests the Respondent registered and is using the disputed domain name to confuse Internet users as to the source or affiliation of its goods and services.
The disputed domain name has not apparently been used in connection with any active website.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. 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 documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 disputed domain names were registered after the Complainant had used and registered its INSTA marks. Given the Complainant’s reputation in Turkey, where the Respondent is based, the Respondent must have been aware of the Complainant’s INSTA trademarks when the disputed domain names were registered. Previous panels have held that the Complainant’s INSTA trademarks are well-known. See, e.g., Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz,WIPO Case No. D2016-2382. The Respondent's prior knowledge of the Complainant was also confirmed by the panel in the decision Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700. Previous UDRP panels have held that actual and constructive knowledge of a complainant's rights at the time of registration of a domain name constitutes strong evidence of bad faith. See eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633. Furthermore, the website previously associated with the disputed domain name had the same “look and feel” as the Complainant’s official log in page. Previous UDRP panels have held that replication of the look and feel of a complainant’s official website suggests intention of misappropriation of the complainant’s well-known trademark for commercial advantage.
The Respondent has registered not only the two disputed domain names, but also the domain names and (as referred to in the decision Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700, in which the panel ordered the transfer of such domain names to the Complainant). The Panel draws the inference that the Respondent has engaged in a pattern of conduct for the purpose of preventing the Complainant from including its trade marks in domain names. Previous UDRP panels have held that a showing of even only one other infringing domain name registered by a respondent can be sufficient to satisfy the “pattern of conduct” standard. See Bellevue Square Managers, Inc. V. Redmond Web and Branden F. Moulton,WIPO Case No. D2000-0056.
The Respondent's two addresses displayed in the WhoIs record do not appear to exist. Previous UDRP panels have held that use of false contact information in WhoIs constitutes evidence of bad faith. See, for example, KT Intellectual Property Holding Company, LLC v. Henry Findstein, SPB Resource & Asset Management Group,WIPO Case No. D2017-2047.
The Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
The disputed domain name was used by the Respondent in connection with a phishing scam that sought to illegitimately collect the confidential account information of Instagram users obviously with malicious intent for commercial gain. Previous UDRP panels have found that such use of a domain name cannot constitute a bona fide offering of goods or services. See Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700. Previous UDRP panels deciding under similar circumstances have also held that a respondent’s deceptive intent to solicit personal information from Internet users by conveying the false impression that the request for information originated from the Complainant is sufficient to establish bad faith, whether or not for commercial gain. See Instagram, LLC v. Instagram ??????,WIPO Case No. D2017-1736. The fact that the disputed domain name no longer resolves to a webpage does not mitigate the Respondent’s bad faith.
The fact that the disputed domain name is being passively held by the Respondent since its creation cannot constitute bona fide use, nor can it confer any rights or legitimate interests in this domain name. It has been established by previous UDRP panels that passive holding does not, as such, confer any rights or legitimate interests in the domain name. In these circumstances, noting the Respondent’s conduct, the Panel finds that the Respondent’s registration and use of the disputed domain name is in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain names 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 disputed domain names and be transferred to the Complainant.
Cherise Valles
Sole Panelist
Date: January 24, 2019
Full & Egal Universal Law Academy