The Complainant is Instagram, LLC, United States of America (United States), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Royden Harquin, Switzerland. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 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 July 11, 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 July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 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.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. In any event, the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 4. Factual Background
The Complainant operates a social media business with over 1 billion monthly active users. The Complainant holds registrations for the trademark INSTAGRAM in numerous countries, which it uses to designate computer software programs, user manuals and related documentation. United States Trademark Registration No. 4146057, for example, shows a priority date of September 19, 2011 and was registered on May 22, 2012.
The Complainant owns numerous domain names that comprise or contain the trade mark INSTAGRAM, including the domain name and has from October 2010 operated an active website as an online social network for Internet users to engage in photo and video sharing.
The Respondent registered the Disputed Domain Name on February 6, 2019. The Disputed Domain Name resolves to a website that contains a substantially identical login page to that of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant cites its United States trademark registrations including No. 4146057 registered in 2012 and numerous other registrations around the world, for the mark INSTAGRAM as prima facie evidence of ownership.
The Complainant submits that the mark INSTAGRAM is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the INSTAGRAM trademark and that the similarity is not removed by the additional letters “pic” or the addition of the generic Top-Level Domain (“gTLD”) “.info”. The Complainant submits that the letters “pic” do, in fact, compound the potential for confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that is almost identical to the login page of the Complainant, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and prior use of the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark INSTAGRAM in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the INSTAGRAM trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark INSTAGRAM; (b) followed by a dash “-”; (c) followed by the letters “pic”; (d) followed by the gTLD “.info”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “instagram-pic”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the letters “pic”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel accepts the Complainant’s contention that the dash and the abbreviation “pic” after the Complainant’s registered trademark are additional elements that do not serve to adequately distinguish the Disputed Domain Name. The addition of an abbreviation of the word “picture” after the mark does nothing to avoid the conclusion that the Disputed Domain Name is confusingly similar to the Complainant’s INSTAGRAM mark, particularly as the evidence is that the Complainant’s business is a social network that involves the sharing of images.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that the evidence is that it resolves to a website containing a copy of the Complainant’s login page, according to the Complainant’s evidence, “used in connection with a phishing scheme that sought to illegitimately collect the account information of Instagram users obviously for commercial gain.”
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903, supra. The copying of the Complainant’s login page artwork and “look and feel” is inconsistent with Respondent having any rights or legitimate interests in the Disputed Domain Name. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark INSTAGRAM is such a famous mark that it would be inconceivable that the Respondent might have registered the mark without knowing of it. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382(“the Respondent was obviously well aware of the Complainant’s well-known INSTAGRAM and INSTA trademarks”); Instagram, LLC v. Ellie Walker,WIPO Case No. D2018-0669 (“the Trade Marks are famous throughout the world”); Facebook, Inc., WhatsApp Inc., Instagram, LLC, Oculus VR, LLC v. Domain Admin / This Domain is For Sale, HugeD,WIPO Case No. D2018-0150 (“Complainants’ well-known marks FACEBOOK, FB, INSTAGRAM, and WHATSAPP”); Instagram, LLC v. Saddam Hussain,WIPO Case No. D2018-0078 (“The INSTAGRAM trademark is a fanciful name with no meaning. It has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown…”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
On the issue of use, the evidence that the Disputed Domain Name resolves to an unauthorized copy of the Complainant’s main login page is evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy (eg: Instagram, LLC v. Instagram ??????,WIPO Case No. D2017-1736 (“soliciting personal information under false pretenses gives rise to an inference that bad faith use of that information is intended”.). The evidence is that the Disputed Domain Name resolved to a website with the same “look and feel” as the Complainant’s login page, in an attempt to “phish” or harvest personal information for commercial gain. This Panel finds that the Disputed Domain Name was being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: August 19, 2019
Full & Egal Universal Law Academy