The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Sercan Lider of United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2019.
The Center verified that the Complaint together with the amended 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 March 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2019.
The Center appointed Stefan Naumann as the sole panelist in this matter on April 4, 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 US company that operates a well-known online photo and video sharing social network application.
The evidence shows that the Complainant owns a number of trademarks for the mark INSTAGRAM including US trademark no. 4146057 for products in class 9, registered on May 22, 2012, European Union trade mark no. 014493886 for products and services in classes 9, 25, 35, 38, 41, and 45, registered on December 24, 2015; and international trademark no. 1129314 designating nine countries including Japan for products and services in classes 9 and 42, registered March 15, 2012. The Complainant also owns a figurative US trademark no. 87035950 for products in class 25, registered on December 5, 2017. The Complainant also owns numerous domain names with the term “instagram”.
The Respondent registered the domain names and on October 29, 2018, using a privacy protection service and a fictitious address. The first letter in both disputed domain names is a lower case letter “L”.
The evidence shows that on November 30, 2018 the website at “www.” is a webpage that featured Complainant’s figurative trademark in the address bar as a favicon and in a message box with the message “Copyright Center Latest Share your photos are Copyright inside. 48 Hours in Return you do not provide your account will Dropped Disabled. We respect Copyright Instagram as a team and take care of the Copyrights Protection [sic]”.
The Complainant indicates that the domain name does not resolve to any website and that the domain name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant
In its complaint, the Complainant asserts that its INSTAGRAM marks are well known and the disputed domain names are confusingly similar to said marks. The Complainant further asserts that Respondent has no permission from the Complainant to use the Complainant’s trademarks or apply for a domain name with the Complainant trademarks, that the Respondent obviously knew of the Complainant’s trademarks, that he or she does not have a right or legitimate interest in respect of the disputed domain names in connection with a bona fide offer of good and services. The Complainant finally asserts that the disputed domain names were registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect of the disputed domain names; and
(iii) the disputed domains name were registered and used in bad faith. A. Identical or Confusingly Similar
The Complainant has established trademark rights in the trademark INSTAGRAM, as noted in section 4 above.
The disputed domain names differ from the Complainant’s trademarks and domain names by replacing the letter “i” of “instagram” with a lower case letter “L” and adding the non-distinctive terms “verificationcenter” and “helpcontact” respectively.
Confusion can result from visual, aural or conceptual similarities.
Replacing the letter “i” by a lower case “L” in the term “Instagram” in the two disputed domain names creates a perceptible aural difference in the pronunciation of the two terms. However, the visual difference between the two terms is small, arguably barely perceptible, when seen or typed in a domain name. The confusion resulting from the visual similarity is such that it alone suffices to support a finding that in the present case the disputed domain names are confusingly similar to the Complainant’s marks. In the view of this Panel, the addition of the non-distinctive terms “verificationcenter” and “helpcontact” have the effect or are intended to increase the risk of confusion, and do not prevent a finding of confusing similarity.
The Panel is satisfied that both disputed domain names are confusingly similar to the Complainant’s trademarks for the purposes of the Policy. B. Rights or Legitimate Interests
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and finds no indication in the evidence that the Respondent could have claimed rights or legitimate interests of its own in the term “lnstagram” alone or with the addition of non-descriptive terms. Since the Respondent has no permission from the Complainant, its use of the disputed domain names is without rights or legitimate interests.
The Panel considers that in the present case, the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent’s use of a webpage with Complainant’s figurative mark at the domain name with a message designed to obtain user information shows that the Respondent registered and was using the disputed domain name in bad faith.
The Respondent also registered the disputed domain name in bad faith since he or she was aware of and targeted Complainant’s figurative mark, which he or she used on a webpage at , and would be unlikely to succeed on a defense that he or she was not aware of Complainant’s INSTAGRAM marks.
The Complainant argues that the bad faith use of the disputed domain name extends to the disputed domain name even though the second domain name did not resolve to any website. Complainant does not allege and submitted no evidence of the Respondent undertaking any positive action in relation to this disputed domain name other than its registration using a privacy protection service and a fictitious address.
In certain circumstances, passive holding can be sufficient to find bad faith use.
As discussed in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the relevant issue whether under the circumstances of the case, it can be held that the Respondent is acting in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel noted that:
“ […] paragraph 4(b) recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.
“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”.
In the present matter, the record shows that:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its very substantial use in the United States of America, which Respondent provided as country of residence in his or her domain name registrations, and in other countries,
(ii) the Respondent registered the domain name at the same time as another domain name that is also confusingly similar to Complainant’s trademarks and that did resolve to a webpage,
(iii) the Respondent hid his or her identity using a privacy protection service and provided fictitious contact details.
In light of these specific circumstances, the Panel concludes that the Respondent’s passive holding of the disputed domain name in the present matter satisfies the bad faith use requirement of 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 two disputed domain names and be transferred to the Complainant.
Stefan Naumann
Sole Panelist
Date: April 18, 2019
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