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 Temp Name Temp Last Name, Temp Organization of Turkey, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with Nics Telekomunikasyon A.S. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2019, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated February 5, 2019, stating that Turkish is the language of the registration agreement of the disputed domain names, on February 6, 2019, the Center sent a request in English and Turkish asking the Parties to submit their comments on the language of the proceeding. On February 6, 2019, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 February 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2019. The Respondent submitted informal email communications but did not submit a formal response. Accordingly, the Center notified the Parties on March 6, 2019 that it would proceed to the panel appointment.
The Center appointed Emre Kerim Yardımcı as the sole panelist in this matter on March 14, 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 the worldwide known online photo and video sharing networking application. The Complainant’s application was launched in 2010 in the United States, and today provides social network services with more than 1 billion active users worldwide and with 37 million accounts in Turkey by the end of 2018.
The Complainant also owns trademark registrations and domain names all over the world for the INSTAGRAM trademark inter alia:
- United States Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012;
- European Union Trademark Registration No. 014493886, INSTAGRAM, registered on December 24, 2015;
- Turkish Trademark Registration No. 2012/85440, INSTAGRAM, registered on April 28, 2015;
- Turkish Trademark Registration No. 2013/74099, INSTAGRAM, registered on May 20, 2015.
The Complainant’s INSTAGRAM trademarks have been recognized as well-known trademarks in previous UDRP decisions and the Complainant’s website has been ranked as the 16th most visited website in the world in 2018.
The disputed domain names and were both registered on May 23, 2018.
The Panel visited the disputed domain names on April 5, 2019, and observed that the disputed domain names do not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s trademark INSTAGRAM and that the addition of the descriptive words “security center” would not prevent a finding of confusing similarity under the first element.
The Complainant considers that the Respondent has no rights or legitimate interests in respect to the disputed domain names, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its trademarks or to register or use any domain name incorporating the trademark INSTAGRAM.
Finally, in addressing the question of registration and use of the disputed domain names in bad faith, the Complainant states that the Respondent was well aware of the Complainant’s trademark at the time of registration of the disputed domain names. In addition to abusive bad faith registration, the Complainant asserts that the Respondent uses the disputed domain names in bad faith. The Complainant contends that the Respondent uses the disputed domain names to send fraudulent emails, impersonating the Complainant, to users of the Complainant’s services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent offered to transfer the disputed domain names without any condition. 6. Discussion and Findings 6.1. Effect of the unilateral consent to transfer by the Respondent
The Panel must decide whether to grant a “unilateral transfer” as requested by the Respondent.
Several prior UDRP decisions show that it is the panel’s discretion to issue a transfer when the respondent has given its unilateral and unambiguous consent to transfer, or to address the conditions for transfer under paragraph 4(a) of the Policy. See, e.g., Vienna Beef Ltd. v. Texas International Property Associates,WIPO Case No. D2007-1133 (where there is a finding that a full discussion of the merits was appropriate despite the respondent’s alleged willingness to unilaterally transfer the domain name).
Although the Panel has the authority to order a transfer based on the Respondent’s consent without further analysis, the Panel considers it appropriate in the circumstances of this case, absent a signed stipulation between the Parties or a withdrawal of the Complaint, to proceed to consider the merits of the case. 6.2. Effect of the Default
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant.
Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. 6.3. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding.
The Registrar has confirmed that the language of the registration agreement is Turkish. The Complaint was filed in English and the Complainant has requested English to be the language of the proceeding on the grounds that:
- The Complainant cannot communicate in Turkish and the translation would result in unwarranted delay and incur considerable expenses;
- The disputed domain names are composed of English terms;
- As the disputed domain names are not resolving to any active website, there is no indication that Respondent could only communicate in Turkish.
In view of the above, the Complainant contends that the Respondent must necessarily be familiar with the English language. Moreover, the Respondent, in emails using the disputed domain names, expressed himself in English.
Paragraph 10 of the Rules vests the panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated equality and each party is given a fair opportunity to present its case.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner. The Panel considers the fact the Respondent has consented to transfer the disputed domain names is a further relevant consideration in support of the fact that the Respondent was able to familiarize himself with the English content of the Complaint and that there is no need to translate the Complaint and its annexes into Turkish, which would lead to undue burdens being placed on the Parties and undue delay to the proceeding, which is supposed to be an inexpensive and expeditious avenue for resolving domain name disputes.
Having considered all the matters above, the Panel determines under paragraph 11 of the Rules that the language of the proceeding shall be English. 6.4. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, “Instagram” is the distinctive part of the Complainant’s trade name and the Complainant holds multiple trademark registrations for INSTAGRAM in various jurisdictions including Turkey, where the Respondent is domiciled.
The disputed domain names and incorporate the Complainant’s INSTAGRAM trademark entirely, as the dominant element and the additional elements “security center” are merely descriptive with respect to the services provided by the Complainant. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.
In line with UDRP panels’ consensus, the generic Top-Level Domain (“gTLD”) “.com" and “.xyz”, are typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of a lack of the Respondent’s rights or legitimate interests in the disputed domain names. The Respondent made no effort to demonstrate any rights or legitimate interests in the disputed domain names. On the contrary, the Respondent sent an email on February 6, 2019, stating: “I have no right to claim for the domain names”, and expressed its consent to transfer the disputed domain names to the Complainant. Accordingly, the Panel determines the Complainant has demonstrated the second element of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s contention that the trademark INSTAGRAM is a well-known trademark. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568).
Furthermore, the Panel accepts the Complainant’s arguments that the Respondent had actual knowledge of the Complainant and its trademarks at the time of the registration of the disputed domain names. The evidence submitted by the Complainant unambiguously demonstrates that the Respondent has shortly after the registration of the disputed domain names started using the latter to send fraudulent emails impersonating the Complainant, as part of a phishing scheme. Therefore, it is clear that the Respondent registered the disputed domain names for fraudulent purposes.
The use of email addresses associated with the disputed domain names to send deceptive emails impersonating the Complainant further constitutes bad faith (see, section 3.4, WIPO Overview 3.0).
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii). 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.
Emre Kerim Yardımcı
Sole Panelist
Date: April 9, 2019
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