The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is ist ist, Armenia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 10, 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 the United States Trademark Registration Number 4146057, registered on May 22, 2012 (first use in commerce on October 6, 2010); the European Union Trade Mark Registration No. 014493886, registered on December 24, 2015; and the International Trademark Registration Number 1129314, registered on March 15, 2012. The Respondent registered the disputed domain name According to the Complaint, the disputed domain name was used in connection to a fraudulent phishing scheme, but does not resolve to an active website. 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 disputed domain name incorporates the Complainant’s INSTAGRAM trademark in its entirety with the addition of the descriptive terms "mail" and "server" separated by hyphens. The Complainant asserts that the addition of such descriptive terms does not prevent a finding of confusing similarity with its INSTAGRAM trademark, which remains clearly recognizable in the disputed domain name. Moreover, 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 asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy that would demonstrate its rights or legitimate interests in the disputed domain name. 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 trademark, in a domain name or otherwise. The Complainant has no prior business relationship with the Respondent whatsoever. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. As a preliminary matter, Instagram’s Brand Guidelines expressly prohibit any unauthorized third party from using the INSTAGRAM trademark in a domain name. There being no license or any other authorization for the Respondent to use the disputed domain name. There is evidence that the disputed domain name has been used to send emails from an email address associated with the disputed domain name, purporting to be sent by the Complainant. The Complainant submits that the disputed domain name has been used as part of a fraudulent phishing scheme to impersonate the Complainant. It is highly likely that, upon clicking on the link to verify their account in the fraudulent email, users are directed to a form that requires them to reveal confidential and/or sensitive information such as their usernames and passwords, which could be used to gain unauthorized access to their accounts. Such use of the disputed domain name is not only detrimental to the Complainant’s business, reputation, and goodwill, but also puts the security of its users at risk. The Respondent’s identifies itself as “ist”, which bears no resemblance to the disputed domain name whatsoever. Nor can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. Activities that attempt to mislead Instagram users into disclosing their private information by creating a false impression of association with the Complainant, thus compromising the security of such accounts, cannot be considered a legitimate noncommercial or fair use of 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 an online photo-sharing social network. Prior UDRP panels have repeatedly recognized the strength and renown of the Complainant’s trademark. Given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s INSTAGRAM trademark at the time of registration of the disputed domain name, especially as the Complainant’s trademark rights significantly predate the registration date of the disputed domain name. It is clear from the content of the emails sent from the email address associated with the disputed domain name that the Respondent had the Complainant in mind when registering the disputed domain name, as the Respondent is seeking to impersonate the Complainant. Accordingly, the Complainant submits that the Respondent, having no authorization from or other affiliation with the Complainant, registered the disputed domain name in bad faith in full knowledge of the Complainant’s rights, in order to create a misleading impression of association with the Complainant. An additional strong indication of the Respondent’s bad faith is the fact that the Respondent registered the disputed domain name using inaccurate or incomplete WhoIs information. The Respondent is using the disputed domain name to send emails impersonating the Complainant in order to obtain personal information from unsuspecting Instagram users who are led to believe that such emails originate from the Complainant. The Complainant infers that the disputed domain name is in fact used as part of a broader fraudulent scheme to induce Instagram users into self‑compromising their accounts by disclosing their confidential passwords. 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 well-known video and photo sharing online application. Annex 11 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 descriptive terms “mail” and “server” separated by hyphens, as well as of the gTLD extension “.com”, see sections 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive terms (such as “mail server”) 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., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; 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. Indeed, the Complainant brought evidences that the disputed domain name has been used in connection with a fraudulent scheme, in which email messages were sent to Instagram users impersonating the Complainant in order to obtain personal data. 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 “instagram-mail-server” 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 2020, 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 “‑mail‑server” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official “mail server” of the Complainant. According to, section 3.1.4 of the WIPO Overview 3.0, 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 evidence that the disputed domain name has been used in connection with a fraudulent phishing scheme, trying to impersonate the Complainant in order to obtain its clients personal data; and (e) the lack of any plausible good faith reason for the adoption of the term “instagram-mail-server” 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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