The Complainant is Instagram, LLC, United States of America (“USA”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Azat Oruc and Azat Mordag, Portugal. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020 regarding the disputed domain name On June 19, 2020, the Center sent an email communication to the Parties in Portuguese and English regarding the language of the proceeding. The Complainant confirmed its request for English to be adopted as the language of the proceeding. The Center sent an email communication to the Complainant on June 19, 2020 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 June 24, 2020, also adding the disputed domain names On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On June 26, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Azat Oruc is listed as the registrant of The Center verified that the Complaint together with the amended Complaints 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 in both English and Portuguese the Respondents of the Complaint, and the proceedings commenced on July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 17, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 14, 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 photo and video sharing social networking application, presently being ranked the 30th 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 USA under No. 4146057, on May 22, 2012 (Annex 9 to the Complaint). The disputed domain names, 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. The Complainant submits that the disputed domain names are subject to common control by either the same person or connected parties, therefore, for reasons of fairness, equity and efficiency, the Complainant requests consolidation of multiple respondents to the same Complaint. The disputed domain names are, according to the Complainant, confusingly similar to the Complainant’s trademark, creating a likelihood of confusion given the reproduction of its trademark which is clearly recognizable as the leading element of the disputed domain names, not adding any distinctiveness thereto the addition of the descriptive terms “help”, “verified”, “verify”, “blue”, “badge” and “center”. Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names given that: (a) the Respondents are not licensees of the Complainant, nor have they been otherwise allowed by the Complainant to make any use of the INSTAGRAM trademark; (b) the Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy given that the there is evidence that the disputed domain names have been used for phishing or other fraudulent activities and/or in connection with webpages depicting the Complainant’s trademarks, and/or to point to an error page; (c) the Respondents are presently passively holding the disputed domain names; (d) the Respondents cannot credibly claim to be commonly known by the disputed domain names, or a name corresponding to the disputed domain names. As to the registration of the disputed domain names in bad faith, the Complainant asserts that the Respondents knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering that it has acquired considerable goodwill and renown worldwide. Further, the Respondents’ intent to target the Complainant can easily be inferred from the contents of the websites at the disputed domain names, which explicitly references the Complainant and reproduces its trademarks. The Complainant further submits that the Respondents have used the disputed domain names in connection with fraudulent schemes to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, (iii) the disputed domain names have been registered and are 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 names. Before turning to these questions, however, the Panel needs to address the issues of the language of the proceeding and the consolidation of Respondents. A. Language of Proceedings The Complainant made a request that the language of the proceeding be English in spite of the fact that the registration agreement is Portuguese given that (i) the disputed domain names include the English descriptive terms “help”, “verified”, “verify, “blue”, “badge” and “center” and (ii) the contents of the websites to which the disputed domain names In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Considering the Complainant’s arguments and that the Respondents did not reply to any of the communications sent by the Center, both in English and in Portuguese, this Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint had to be translated into Portuguese. Accordingly, the Panel accepts the Complainant's request for English to be the language of this proceeding. B. Consolidation of Respondents The Complainant requests that this Panel accept both Respondents in a single proceeding in view of the facts enumerated at section 5.A. above. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the four disputed domain names dealt with at the same procedure, given that: a) the disputed domain names were all registered with an address in Lisbon, Portugal, b) while the disputed domain names This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties. C. Identical or Confusingly Similar The Complainant has established its rights in the INSTAGRAM trademark (Annex 9 to the Complaint). The Panel finds that the disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of the terms “help”, “verified”, “verify, “blue”, “badge” and “center” does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7). The first element of the Policy has therefore been established. D. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In the present case, the Respondents’ use of the disputed domain names to impersonate the Complainant and to conduct phishing activities and/or in connection with webpages depicting the Complainant’s trademark and/or to point to an error page clearly cannot be considered a bona fide offering of goods or services. Moreover, at the time the Panel visited one of the disputed domain names it is pointing to a potentially harmful webpage which is blocked due to potential phishing scams. This use clearly does not grant Respondents’ rights or legitimate interests. In addition to that, the absence of any indication that the Respondents have been commonly known by the disputed domain names, or that they have acquired any registered trademarks or trade names corresponding to the disputed domain names, as well as the Complainant’s statement that no authorization, license or permission has been given for the Respondents to register and use the disputed domain names corroborate with the indication of the Respondents’ lack of rights or legitimate interests in the disputed domain names. Moreover, the Panel notes that the Respondents have not asserted any rights or legitimate interests in respect of the disputed domain names, despite being given the chance. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names. E. 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 names in connection with fraudulent schemes and with websites that reproduced the Complainant’s trademarks, characterizes the Respondents’ intent of commercial gain by misleadingly diverting the Complainant’s consumers. Moreover, the inactive use of one the disputed domain names to point to an error page does not prevent a finding of bad faith. As previously noted, the Panel visited the websites and got a warning message for potential phishing, which is further evidence of bad faith. For the reasons above, the Panel finds that the Respondent’s amounts to bad faith registration and use of the disputed domain names 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 names, Wilson Pinheiro Jabur
Sole Panelist
Date: September 28, 2020
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