Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondents are Domain Admin, Whois Privacy Corp., Bahamas, and Ferhat Sizer, Turkey (collectively hereinafter referred to as “Respondent”). 2. The Domain Names and Registrars
The disputed domain name is registered with Internet Domain Service BS Corp. The disputed domain names and are registered with N, Inc. (N LLC) (collectively hereinafter referred to as the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27 and 28, 2019, the Registrars transmitted by email to the Center their verification responses confirming that one of Respondents is listed as the registrant and disclosing additional registrant and contact information for the disputed domain name. The Center sent an email communication to Complainant on June 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 2, 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 Respondent of the Complaint, and the proceedings commenced on July 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 24, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 30, 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
Complainant is a well-known social networking application for sharing photos and videos online.
Complainant owns several trademark registrations for INSTAGRAM and INSTA, including the following:
INSTAGRAM, United States Trademark Registration No. 4,146,057, registered on May 22, 2012, filed on September 19, 2011, covering downloadable computer software for modifying the appearance and enabling transmission of photographs, in Class 9. First used in commerce: October 6, 2010.
INSTAGRAM, United States Trademark Registration No. 4,795,634, registered on August 18, 2015, filed on March 4, 2013, covering downloadable computer software, et cetera, in Class 9; telecommunication services, et cetera, in Class 38; providing computer, electronic and online databases, et cetera, in Class 41, providing a website that gives users the ability to upload photographs, et cetera, in Class 42, Internet based social introduction, networking and dating services, et cetera, in Class 45. First use in commerce: May 13, 2013.
INSTAGRAM, International Registration No. 1129314, registered on March 15, 2012, based on United States application Nos. 85426267 and 85426271 filed on September 19, 2011, covering goods and services in International Classes 9 and 42.
INSTAGRAM, European Union Trademark Registration No. 014493886, registered on December 24, 2015, filed on August 20, 2015, covering clothing, et cetera, in Class 25, marketing, advertising and promotion services, et cetera, in Class 35; telecommunication services, et cetera, in Class 38; providing computer, electronic and online databases, et cetera, in Class 41; online social networking services; Internet based social introduction, networking and dating services, et cetera, in Class 45.
INSTAGRAM, Turkish Trademark Registration No. 2018 73343, registered on December 5, 2018, filed on August 7, 2018, covering goods in Class 9 and services in Class 42.
INSTA, United States Trademark Registration No 5,061,916, registered on October 18, 2016, filed on May 21, 2015, covering downloadable computer software for modifying the appearance and enabling transmission of photographs, et cetera, in Class 9; First use in commerce: September 20, 2011.
INSTA, European Union Trademark Registration No. 014810535, registered on May 23, 2018, filed on November 19, 2015, covering downloadable computer software for modifying the appearance and enabling transmission of photographs, et cetera, in Class 9.
In addition, Complainant owns several domain names consisting of, or including the INSTAGRAM trademark, such as (at which Complainant operates its “www.” website), , , , et cetera.
According to the relevant WhoIs data, the record for the disputed domain name was created on March 28, 2019, the record for the disputed domain name was created on April 6, 2019, and the record for the disputed domain name was created on April 24, 2019.
The disputed domain names and resolve to a webpage displaying a logo similar to Complainant’s official logo, and a text stating, “This is the unofficial chrome client for Instagram. launch the app, please press the button below”, followed by a button labelled “Continue”. When this button is pressed, the user is redirected to Complainant’s official website “www.”.
The disputed domain name resolves to a webpage offering the Internet user, inter alia, to find who has viewed its profile and other related services, such as sending followers and “likes” to the Internet user’s profile for a payment.1 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
The disputed domain name incorporates Complainant’s trademark INSTAGRAM, simply omitting the two occurrences of the letter “a”, an obvious or intentional misspelling. Thus, the disputed domain name is clearly evocative of the INSTAGRAM trademark, which remains recognizable.
The disputed domain names and incorporate Complainant’s INSTA trademark in its entirety, together with the descriptive terms “web” and “stalker” as prefixes, and with an additional “a” in the case of the disputed domain name . Complainant’s trademark INSTA is clearly recognizable in both disputed domain names. In the case of the disputed domain name , the addition of an extra “a” does not prevent confusing similarity with Complainant’s mark, noting that the element “instaa” remains phonetically identical to the INSTA trademark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests. Respondent is not a licensee of Complainant, nor has Respondent been otherwise authorized by Complainant to make any use of its INSTAGRAM or INSTA trademarks, in a domain name or otherwise.
Respondent cannot assert that prior to any notice of this dispute it 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 names and both resolve to identical landing pages, which in turn redirect Internet users to Complainant’s official website “www.”. Such use does not amount to any substantial business activity in connection with the disputed domain names and is similar to passive holding. One cannot exclude there being some form of non-public-facing use of the disputed domain names, such as in connection with email addresses intended to mislead Internet users as being associated with Complainant. The disputed domain name resolves to a website that purports to offer a tool for Instagram users to see who has viewed their profile, and if someone is “stalking” them. Respondent’s website copies the look‑and-feel of Complainant’s website by using the same distinctive purple and orange color scheme, and by copying the font used by Complainant for its stylized trademark. While the links to purchase “packets” or “credits” to obtain likes and follows do not function, it is clear that Respondent intended to make unauthorized use of Complainant’s trademark for its own commercial gain. Respondent’s website invites Internet users to “sign in” using their Instagram username and password. Complainant suspects this is in fact part of a scheme to gain unauthorized access to Instagram users’ accounts by misleading such users into self-compromising their accounts by disclosing their personal login credentials.
There is no evidence to suggest that Respondent is commonly known by the disputed domain names. Respondent has registered the disputed domain name using a privacy service. Based on the similarities between the websites at the disputed domain names and , it is Complainant’s understanding that all of the disputed domain names are held by an individual under the name “Ferhat Sizer”, which bears no resemblance to the disputed domain names whatsoever
The disputed domain names were registered and are being used in bad faith. Complainant’s trademarks INSTAGRAM and INSTA are inherently distinctive and well known throughout the world. Respondent’s intent to target Complainant can readily be inferred from the content of the websites at the disputed domain names, all of which make explicit reference to Complainant. Respondent’s websites all make use of the font used by Complainant for its stylized trademark. Respondent’s website at the disputed domain name makes use of the same purple and orange color scheme used by Complainant. Complainant asserts that the disputed domain names have been registered in bad faith in an attempt to create a misleading impression of association with Complainant, and to take advantage of the goodwill associated with Complainant’s trademarks.
By registering the three disputed domain names targeting Complainant’s trademarks, Respondent has engaged in a bad faith pattern of abusive domain name registration within the meaning of paragraph 4(b)(ii) of the Policy.
The disputed domain names and resolve to landing pages with a link that redirects Internet users to Complainant’s official website. Thus, Respondent is not making any clear substantive use of these disputed domain names. Such use of the disputed domain names is similar to passive holding, which would not prevent a finding of bad faith. Complainant’s INSTAGRAM and INSTA trademarks are distinctive and are exclusively associated with Complainant. Furthermore, the use of the disputed domain name indicates that Respondent does not have any contemplated good-faith use in mind for the disputed domain names and .
Respondent’s holding of the disputed domain names and represents an abusive threat hanging over the head of Complainant (i.e., an abuse capable of being triggered by Respondent at any time) and therefore a continuing abusive use. See Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564.
As to Respondent’s website at the disputed domain name , Respondent is seeking to create an impression of association with Complainant as to the “services” offered therein. Respondent copies the look-and-feel of Complainant’s trade dress in order to generate such an association. There is nothing on Respondent’s website in the way of a disclaimer or notice to indicate that Respondent is not affiliated with Complainant. Even though the links to purchase “packets” or “credits” for additional likes and/or followers do not work, it is clear that Respondent intended to commercialize its website. Furthermore, Respondent invites Internet users to “sign in” using their Instagram username and password. It is difficult to conceive of any other motivation for Respondent to engage in such behavior, other than to obtain financial gain as a result of unauthorized access to Instagram users’ accounts. In light of the above, Complainant submits that Respondent registered the disputed domain name in order to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks, as to the source or affiliation of its website and the services purportedly offered on its website in accordance with paragraph 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Consolidation
In its amended Complaint, Complainant asserts that the disputed domain name and are registered to Ferhat Sizer, while the disputed domain name is registered in the name of a privacy service. However, the fact that the disputed domain names and resolve to websites with identical content strongly supports the inference that the disputed domain names are held by the same person, or are under the common control of the same group of persons. Complainant says that in the interests of fairness and efficiency, it is justified in bringing a single consolidated Complaint against two nominally different registrants (Respondent), and requests the Panel to accept a single Complaint against Respondent.
The Panel is satisfied that the registrations of the disputed domain names are under common control because they resolve to websites with the same content. In the view of the Panel, this coincidence strongly suggests that the disputed domain names are registered by the same domain name holder or are under common control. As required by Rules paragraph 3(c) this circumstance supports Complainant’s request.
Therefore, the Panel grants a consolidation of the Complaint against Domain Admin, Whois Privacy Corp. and Ferhat Sizer. B. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it has trademark rights in the INSTAGRAM and INSTA trademarks. See section 4 above.
The Panel notes that, visually, in the disputed domain name , Complainant’s mark INSTAGRAM is easily recognizable. In fact, the deletion in the mark of the two instances of the letter “a” does not render any meaningful term aside from Complainant’s well‑known mark. From the aural point of view, it is almost impossible to pronounce the disputed domain name unless some vocalic sound is added. From the overall comparison, it is clear that the disputed domain name is simply a typosquatting of Complainant’s mark INSTAGRAM.
The Panel also notes that in the disputed domain names and the dictionary terms “stalker” and “web” are added to Complainant’s mark INSTA (in the latter case also duplicating the letter “a”). It is well established that such kind of additions are insufficient to prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (…)”).
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark INSTAGRAM, and that the disputed domain names and are confusingly similar to Complainant’s mark INSTA. C. Rights and Legitimate Interests
Complainant contends that Respondent is not a licensee of Complainant, and that it has not authorized Respondent to make any use of its INSTAGRAM or INSTA trademarks. The Panel does not see any evidence showing the contrary. In addition, according to the relevant WhoIs data, the registrants of the disputed domain names are “Domain Admin, Whois Privacy Corp.”, and “Ferhat Sizer”, which means that Policy paragraph 4(c)(ii) does not apply.
The Panel agrees with Complainant that Respondent is not using 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 names and redirect Internet users to Complainant’s official website “www.”, i.e. they are not actively used. Alternatively, their websites create the impression that they belong to or are in some way associated with Complainant. In fact, the disputed domain names and resolve to webpages displaying a logo similar to Complainant’s official logo and a text stating, “This is the unofficial chrome client for Instagram. launch the app, please press the button below”, a legend followed by a button labelled “Continue”. When this button is pressed, the user is redirected to Complainant’s official website “www.”.
The Panel also notes that the disputed domain name resolves to a webpage offering the Internet user to find who has viewed its profile and other related services, including for a payment. Thus, Respondent is seeking to extract a profit from the users’ confusion as to the source of the offering. In the view of the Panel, either by imitating the look and feel of Complainant’s official website, or by creating the impression of association with Complainant, Respondent’s use of the disputed domain names is neither a bona fide use under Policy paragraph 4(c)(i) nor a fair or legitimate noncommercial use under Policy paragraph 4(c)(iii).
In sum, Complainant has succeeded in raising a prima facie case that Respondent does not have any rights or legitimate interests in the disputed domain names. For its part, Respondent failed to present any explanation or reasons for its registration and use of the disputed domain names as described above. Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names. D. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered almost seven years after Complainant had first registered its INSTAGRAM trademark, and that the disputed domain names and were registered over two years after Complainant had registered its INSTA trademark. Complainant has shown that according to Alexa, Complainant’s website “www.” is ranked 14th among the most visited websites. Complainant also provided its own company information, independent press articles, webpages such as “/instagram”, “/instagram”, “/company/instagram”, and a Wikipedia entry showing that the INSTAGRAM mark and application enjoyed considerable renown and public recognition at the time Respondent registered the disputed domain names. In this regard, the Panel shares the opinion of prior UDRP panels that the INSTAGRAM and INSTA marks are well known and enjoy widespread recognition. See Instagram, LLC v. Saddam Hussain,WIPO Case No. D2018-0078, and Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700. Together with these factors, the very use of the websites at the disputed domain names, as shown above, demonstrates that Respondent perfectly knew of, and targeted Complainant, its INSTAGRAM and INSTA marks and services at the time of registering the disputed domain names. In the circumstances of this case, this means that such registrations were in bad faith.
As shown at section 6C. above, the disputed domain names are being used either as an imitation of Complainant’s official website, or as a means to attract Internet users presumably looking for Complainant’s official website, with the purpose of generating fees for services related to these users’ Instagram accounts. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: August 13, 2019
1 According to an automated translation from Turkish into English using Google Translate.
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