The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Yaroslav Nevsky, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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 May 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 4, 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 the world-renowned online photo and video sharing social networking application Instagram. The Complainant obtained registrations for the trademark INSTAGRAM in numerous regions of the world, including United States Trademark Registration Number 4146057, registered on May 22, 2012 (first use in commerce on October 6, 2010); the International Trademark Registration Number 1129314, registered on March 15, 2012; the United Kingdom Trademark Registration Number UK00003123325, registered on January 15, 2016; the United Arab Emirates Trademark Registration Number 239855, registered on May 18, 2016; and the Russian Trademark Registration Number 581004, registered on July 18, 2016 (priority date of August 21, 2015). The Respondent registered the disputed domain name According to the Complaint, the disputed domain name resolved to a GoDaddy parking page. The Panel accessed the disputed domain name on June 15, 2020, at which time the disputed domain name did not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns numerous trademark registrations for INSTAGRAM in jurisdictions throughout the world. The disputed domain name incorporates the Complainant's INSTAGRAM trademark in its entirety with the addition of the descriptive term “ecommerce”. The Complainant submits that its INSTAGRAM trademark is readily recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the Complainant’s mark. Prior UDRP panels have held similar domain names to be confusingly similar to the respective complainant’s trademarks. The applicable generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy that might demonstrate his rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its INSTAGRAM trademarks, in a domain name or otherwise. The Respondent cannot assert that prior to any notice of this dispute he was using, or had made demonstrable preparations to use, 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. The disputed domain name resolves to a parking page provided by the Registrar lacking any substantive content. To the best of the Complainant's knowledge, the disputed domain name has not been used to resolve to any other website, and has not been used for any other use (such as for email). The mere parking of the disputed domain name does not amount to any substantive use of the disputed domain name and is similar to passive holding. There is no evidence to suggest that the Respondent is commonly known by the disputed domain name, as contemplated by paragraph 4(c)(ii) of the Policy. Despite the disputed domain name being registered behind a privacy service, the Complainant understands that the disputed domain name is registered to an individual named “Yaroslav Nevsky”, which bears no resemblance to the disputed domain name whatsoever. To the best of the Complainant's knowledge, the Respondent has not sought to secure any trademark rights in “instagram”, “instagramecommerce”, or any variation thereof. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In light of the use to which the disputed domain name has been put, as described above, the Complainant further asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. Despite the Complainant’s efforts to contact the Respondent, notifying the Respondent of its rights in the INSTAGRAM trademark, the Respondent has not come forward to otherwise assert any rights or legitimate interests in the disputed domain name. - The disputed domain name was registered and is being used in bad faith. The Complainant’s INSTAGRAM trademark is inherently distinctive and well known throughout the world in connection with its online photo-sharing social network. Prior UDRP panels have recognized the strength and renown of the Complainant’s INSTAGRAM trademark, and have ordered the transfer of such disputed domain names to the Complainant. The term “instagram” is highly distinctive and is exclusively associated with the Complainant. The Respondent could not credibly claim to have been unaware of the Complainant and its INSTAGRAM trademark at the time he registered the disputed domain name in August 2018, by which time the Complainant had already gained substantial international notoriety. The Respondent proceeded to register the disputed domain name in full knowledge of the Complainant's rights. The Complainant has identified a number of other domain names comprising third-party trademarks, registered using an email address that appears to be associated with the Respondent, indicative of a pattern of trademark abusive domain name registration. For the foregoing reasons, the Complainant submits that the disputed domain name was registered in bad faith. Furthermore, the Respondent is not making any apparent substantive use of the disputed domain name (passive holding), which would not prevent a finding of bad faith. Notwithstanding the Complainant’s efforts to resolve this matter prior to filing the present UDRP Complaint, the Respondent failed to reply to the Complainant's cease-and-desist letter of March 5, 2020 or to its subsequent reminder. In addition, the Respondent has taken active steps to conceal his identity by registering the disputed domain name behind a privacy service. Finally, the Complainant submits that the disputed domain name carries a risk of implied affiliation with the Complainant’s INSTAGRAM trademark, and that there is no plausible good-faith use to which the disputed domain name could be put that would not have the effect of misleading consumers as to the source or affiliation of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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. A. Identical or Confusingly Similar The Panel has no doubt that “instagram” is a term directly connected with the Complainant’s notorious video and photo sharing online application. Annex 9 to the Complaint shows trademark registrations for INSTAGRAM obtained by the Complainant as early as in 2012. The trademark INSTAGRAM is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark INSTAGRAM merely by the addition of the term "ecommerce”, as well as of the gTLD extension “.com”. Previous UDRP panels have found that the mere addition of terms (such as “ecommerce”) to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000‑0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal‑Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927). It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is 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 at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “instagramecommerce” was chosen to compose the disputed domain name. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2018, the trademark INSTAGRAM was already well known and directly connected to the Complainant’s photo and video sharing social networking application. The disputed domain name encompasses the trademark INSTAGRAM. The addition of the term “ecommerce” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official “e-commerce” of the Complainant. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence. Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances of this case, including: (a) the Respondent not presently using the disputed domain name; (b) the Respondent not indicating any intention to use the disputed domain name; (c) the Respondent not providing justifications for the registration of a domain name containing a third-party famous trademark; (d) the adoption of privacy services when registering the disputed domain name; (e) the indications of a pattern of trademark abusive domain name registration; and (f) the lack of any plausible good faith reason for the adoption of the term “instagramecommerce” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third 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 Rodrigo Azevedo
Sole Panelist
Date: June 21, 2020
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