Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Aditya DUBEY, India.1 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 14, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2020, 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 Complainant on May 18, 2020, 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 May 19, 2020. 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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Center received Respondent’s communications by email on May 22, 2020 and on May 30, 2020. Respondent did not submit a formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on June 10, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 18, 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 Complainant is a company organized under the laws of the United States which operates the online photo and video sharing social network application “Instagram”. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “Instagram”, including the following: - Word mark INSTAGRAM, World Intellectual Property Organization (WIPO), registration number: 1129314, registration date: March 15, 2012, status: active; Moreover, Complainant has evidenced to own various domain names relating to its company name, brand and trademarks, inter alia, the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of India who registered the disputed domain name on January 14, 2018, which resolves to a website at “www.instamust.com” purporting to offer services to grow Instagram users’ likes and followers. Such website mimics Complainant’s branding by making use of the same distinctive pink-and-purple color scheme, the same typeface as in the stylized version of Complainant’s INSTAGRAM word mark, as well as by including a variation of Complainant’s further INSTAGRAM camera logo and figurative trademarks; the website’s footer indicates that “InstaMust is not endorsed or associated with Instagram or Facebook.” Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that its social network application “Instagram” is worldwide renowned and is the world’s fastest growing photo/video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide and constantly ranked amongst the top “apps” for mobile devices. Complainant submits that the disputed domain name is similar to its INSTA and INSTAGRAM trademarks as it incorporates the INSTA trademark in its entirety and also comprises the dominant feature of the INSTAGRAM trademark, together with the descriptive term “must”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent neither is a licensee of Complainant, nor has Respondent been otherwise authorized by Complainant to make any use of its trademarks in a domain name, (2) Complainant has uncovered reports from third parties that the services offered by Respondent are not genuine, but attempt to defraud Instagram users, (3) even if Respondent’s activities were not illegal, Respondent still failed to fulfill the requirements of the so-called Oki Data criteria, (4) Respondent’s name bears no resemblance to the disputed domain name whatsoever, and (5) Respondent’s website is clearly intended to be commercial in nature. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant’s INSTA and INSTAGRAM trademarks are well-known throughout the world and the content of Respondent’s website clearly demonstrates that Respondent had actual knowledge of Complainant and its trademarks when registering the disputed domain name, (2) Respondent obviously registered the disputed domain name in order to capitalize on the goodwill associated with Complainant’s INSTA and INSTAGRAM trademarks and to derive unfair commercial advantage from the unauthorized use of Complainant’s intellectual property, (3) the services offered through Respondent’s website are obviously not genuine, and (4) despite of the inclusion of a small disclaimer in the footer of Respondent’s website, the making use of the same distinctive color scheme, typeface and camera logo as used by Complainant leaves the overwhelming impression that the services offered therein are somehow affiliated with or endorsed by Complainant which is not the case. B. Respondent Respondent has not filed an official Response, however, has indicated by means of email communications sent to the Center on May 22, 2020, and on May 30, 2020, that (1) Respondent registered the disputed domain name a few years ago for a local client with whom it had no communication since late 2018, (2) Respondent has no access to the content of the website to which the disputed domain name resolves, (3) Respondent has never personally used such website for any business whatsoever, (4) the PayPal account used on such website belongs to a third party who is currently running the website and is monetizing it, which is why (5) Respondent was happy to transfer the disputed domain name to Complainant. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that 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 Panel concludes that the disputed domain name The disputed domain name incorporates the INSTA trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). As far as the INSTAGRAM trademark is concerned, the disputed domain name incorporates at least a prominent feature of said trademark and may be considered confusingly similar thereto for purposes of standing under the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g., descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “must” does not dispel the confusing similarity arising from the incorporation of Complainant’s INSTA trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions and in light of Respondent’s email communications of May 22, 2020, and May 30, 2020, that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its INSTA and/or its INSTAGRAM trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name, and moreover Respondent does not appear to have any trademark rights associated with the terms “Insta” and/or “Instagram” its own. Finally, the disputed domain name resolves to a commercially active website at “www.instamust.com” which purports to offer services to grow Instagram users’ likes and followers, and which by the same time mimics Complainant’s branding by making use of the same distinctive pink-and-purple color scheme, the same typeface as in the stylized version of Complainant’s INSTAGRAM word mark, as well as by including a variation of Complainant’s further INSTAGRAM camera logo and figurative trademarks. Such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). In its email communications of May 22, 2020, and May 30, 2020, Respondent did neither contest nor challenge any of Complainant’s allegations set out in the Complaint, but rather indicated that it was more than happy for several reasons to transfer the disputed domain name to Complainant. The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The direction of the disputed domain name, which is confusingly similar to at least Complainant’s INSTA trademark, to a website at “www.instamust.com” which purports to offer services to grow Instagram users’ likes and followers, and which by the same time mimics Complainant’s branding by making use of the same distinctive pink-and-purple color scheme, the same typeface as in the stylized version of Complainant’s INSTAGRAM word mark, as well as by including a variation of Complainant’s further INSTAGRAM camera logo and figurative trademarks, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant’s INSTA trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. This finding is not in contrast to the fact that Respondent’s website’s footer contains a small disclaimer indicating that “InstaMust is not endorsed or associated with Instagram or Facebook.”; it is widely agreed among UDRP panels that where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith (see WIPO Overview 3.0, section 3.7). Also, many UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (see WIPO Overview 3.0, section 3.5), which is why Respondent’s allegations set forth in its email communications sent to the Center on March 22, 2020, as well as on March 30, 2020, e.g., that Respondent had no access to the content of the website to which the disputed domain name resolves, is not in contrast to the finding of Respondent’s bad faith, either. In this context, the Panel has also noted that Respondent not only made use of a WhoIs Privacy Service in order to conceal its true identity, but also provided faulty or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated May 20, 2020 could not be delivered. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding. Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung 1 It is evident from the case file that Registration Private, Domains By Proxy, LLC, United States, is a privacy protection service and that Aditya DUBEY, India, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
- Word mark INSTA, United States Patent and Trademark office (USPTO), registration number: 5061916, registration date: October 18, 2016, status: active.
Sole Panelist
Date: June 24, 2020
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