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 Domain Admin, Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 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.
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 April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2019.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 7, 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 factual findings pertinent to the decision in this case are that:
(1) the Complainant provides a photo and video sharing application by reference to the trade mark INSTAGRAM (the “Trade Mark”);
(2) the Trade Mark is the subject, inter alia, of United States Patent & Trademark Office (“USPTO”) Reg. No. 4,146,057, registered on May 22, 2012;
(3) the disputed domain name was registered on June 17, 2018;
(4) the term “pirater” means “to hack” in the French language and the disputed domain name has previously resolved to a website entitled “pirater un compte Instagram” meaning “to hack an Instagram account” in French; and
(5) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in INSTAGRAM. It holds a national registration for the Trade Mark and submits that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because it has no trade mark rights; is not known by the disputed domain name; and the disputed domain name has not been used other than for a nefarious purpose.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith having targeted the Complainant’s business.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name. B. Respondent
The Respondent did not submit a Response. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of its USPTO registration of the Trade Mark and so the Panel finds that the Complainant has trade mark rights.
The disputed domain name takes the Trade Mark and merely adds the generic Top-Level Domain (“gTLD”) “.org” together with the French term “pirater” meaning “to hack”. The gTLD can be disregarded for the purposes of comparing the disputed domain name with the Trade Mark2 and the added term is insufficient to avoid a finding of confusing similarity3 .
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark and so finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant needs only to make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name4 .
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 organization) 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 publicly available WhoIs data for the disputed domain name registrant does not suggest that the Respondent might be commonly known by the disputed domain name. The Panel finds no other evidence that the Respondent might be commonly known by the disputed domain name.
Further, the Complainant states that there is no association between the Parties and there is nothing to contradict that claim. There is no evidence that the Respondent has any trade mark rights.
The Complainant provides evidence that the disputed domain name previously resolved to a French language website which alleged to offer “an instagram hack that really works and is available free of charge by simply registering without a credit card”. The Complaint states that “[S]uch ‘password hacking’ is technically impossible and so there are strong indications that the Respondent was using the Domain Name to perpetrate fraudulent activities, including phishing, identity theft or other types of abusive behaviour.” Whether the resolving website was intended for phishing or not, clearly it did not show either use of the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
The Complaint does not readily support a finding that the Respondent’s conduct falls under any of paragraphs 4(b)(i)-(iv) above as this list is without limitation. Nevertheless, the Panel finds, as separate matters, registration in bad faith and use in bad faith. The disputed domain name, by reason of its stated purpose, clearly targeted the Complainant and its Trade Mark. The Panel finds registration in bad faith.5 Further, the described use of the disputed domain name was in bad faith because it was for a nefarious purpose.
The Panel finds that the Complainant has satisfied the third and final element 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.
Debrett G. Lyons
Sole Panelist
Date: May 21, 2019
1 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See section 1.11.1 of the WIPO Overview 3.0.
3 See section 1.8 of the WIPO Overview 3.0; see also WhatsApp Inc. and Facebook, Inc. v. Whois Agent, Domain Protection Services, Inc. / Julio Cesar Newton, Julio Cesar, Miguel Guerrero, Marketing y Webs Guerrero SL and Migue Guerrero,WIPO Case No. D2018-2711 ("Accordingly, the Panel is of the view that the Complainant’s marks are readily recognisable within each of the disputed domain names and that the addition of the following descriptive Spanish terms is insufficient to avert a finding of confusing similarity: ‘hackear’ (meaning ‘to hack’), como hackear” (“how to hack”), “espiar” (“to spy”), “ya” (“already”) and “conversaciones” (“conversations”)”.
4 See, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
5 See, for example, Star Stable Entertainment AB v. Victor Arreaga / WhoisGuard Protected, WhoisGuard, Inc.,WIPO Case No. D2015-2315 () (“It is clearly to be inferred from such use that the Respondent registered the disputed domain name with the intention either of impersonating the Complainant or of offering a method to ‘hack’ the Complainant’s website or services. In either case, such registration unfairly targets the Complainant's trademark and constitutes registration in bad faith.”).
Full & Egal Universal Law Academy