The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Remzi Kurcan, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2020. On January 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2020, 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 February 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 6, 2020. 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 an online social networking application, presently having more than 1 billion active users and being ranked the 27 most visited website in the world (Annex 4 to the Complaint). The Complainant is the owner, amongst others, of the trademark INSTAGRAM registered in the United States of America under No. 4146057, on May 22, 2012 (Annex 12 to the Complaint). The disputed domain name The Complainant asserts to be one of the world’s leading providers of online social networking services and applications, actively promoting and using its INSTAGRAM trademark throughout the world. According to the Complainant, the disputed domain name resolved to a website that described itself as “Instagram Online Web Viewer. Anonymously view the profiles, stories and posts of Instagram users”, also copying the same color scheme and icon mark pertaining to the Complainant, in addition to displaying commercial banners and links to other commercial websites in spite of a disclaimer in the bottom of the page stating that “[t]his product uses the Instagram API but is not endorsed or certified by Instagram. All Instagram TM logos and trademarks displayed on this application are property of Instagram” (Annex 9 to the Complaint). The Complainant further states to have sent a cease and desist letter to the Respondent’s privacy address indicated in the WhoIs relating to the disputed domain name on November 5, 2019, as well as to the disputed domain name registrar (Annexes 10 and 11 to the Complaint) but received no reply. On December 17, 2019, the registrar agreed to forward the Complainant’s cease and desist letter to the Respondent (Annex 11) and yet no reply was received by the Respondent, leading to the filing of the Complaint. The disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that: (a) the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the INSTAGRAM trademark; (b) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy given that the Complainant’s API Platform guidelines expressly prohibit the replication of the core user experience of the Instagram apps or website such as to build a media viewer; (c) the Respondent is also unduly profiting from the use of the Complainant’s trademark in view of the commercial banners displayed at the website that resolved from the disputed domain name; (d) the Respondent cannot credibly claim to be commonly known by the disputed domain name, or a name corresponding to the disputed domain name, not having secured any valid trademark rights either in the terms “Instagram” or “instagr4m”. As to the registration of the disputed domain name in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain name considering that it has acquired considerable goodwill and renown worldwide. Further, the Respondent’s intent to target the Complainant can easily be inferred from the content of the website at the disputed domain name, which explicitly references the Complainant and reproduces its trademarks. The Complainant further submits that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website. The disclaimer displayed at the disputed domain name is insufficient to avoid such confusion. Lastly, the Complainant indicates that the Respondent’s failure to reply to the Complainant’s cease and desist letter may also be considered an additional indicator of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainant has established its rights in the INSTAGRAM trademark (Annex 12 to the Complaint). The disputed domain name, Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In the present case, the Respondent used the disputed domain name in connection with a website that clearly relied on the Complainant’s notorious application to profit from pay-per-click links to third party websites, which clearly cannot be considered a bona fide offering of goods or services. In addition to that, the absence of any indication that the Respondent has been commonly known by the disputed domain names, or that he has acquired any registered trademarks or trade names corresponding to the disputed domain name, as well as the Complainant’s statement that no authorization, license or permission has been given for the Respondent to register and use the disputed domain name corroborate with the indication of the Respondent’s lack of rights or legitimate interests in the disputed domain name. Moreover, the Panel notes that the Respondent has not asserted any rights or legitimate interests in respect of the disputed domain name, despite being given the chance prior to the proceeding when in receipt of the Complainant’s letters and later upon receipt of the commencement of the administrative proceeding on February 4, 2020, upon which the Respondent was granted 20 days to respond. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the use of the disputed domain name in connection with a website that reproduced the Complainant’s trademarks and allowed Internet users to anonymously browse the Complainant’s application, in discordance with the Complainant’s policy, also displaying links or pay-per-click advertisements characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links displayed at the disputed domain name. As to the disclaimer that was placed in the website, this Panel, considering the overall circumstances of this case considers that “the mere existence [thereof] cannot cure such bad faith”, since the use of such a disclaimer can be seen as “an admission by the respondent that users may be confused” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.7). Two other relevant factors corroborate the finding of the Respondent’s bad faith conduct in this case: the lack of a reply to the cease and desist letters sent prior to this procedure as well as the use of a false address in the WhoIs data and, consequently, the Center not being able to deliver the written notice to the Respondent. For the reasons above, the Panel finds that the Respondent’s amounts to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 Wilson Pinheiro Jabur
Sole Panelist
Date: March 12, 2020
Full & Egal Universal Law Academy