The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is TJ Carbone, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2020. The Respondent contacted the Center on July 15, 2020, explaining that it would be willing to settle. The Complainant requested that the proceeding continue. The Center appointed Nicolas Ulmer as the sole panelist in this matter on July 23, 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 a very well-known online social networking application for photo and video sharing; it was launched in 2010 and acquired by Facebook in 2012. According to the Complaint, the Instagram website “www.instagram.com” is the 30th most visited website in the world, and Instagram has ranked among the top applications for mobile phone devices; there were hundreds of millions of active monthly users. The Complaint and its Annexes also submit articles and other evidence demonstrating the rapid growth and popularity of the Complainant’s applications and online presence. The Complainant submits an Annex listing numerous trademark registrations for INSTAGRAM in a variety of jurisdictions, and the Complaint specifically cites, highlights, and provides proof of registration of the following marks: − United States Trademark No. 4146057, INSTAGRAM, registered on 22 May 2012 (first use in commerce on October 6, 2010); − European Union Trade mark No. 014493886, INSTAGRAM, registered on December 24, 2015; and − International Trade mark No. 1129314, INSTAGRAM, registered on March 15, 2012. In addition, the Complainant has registered numerous domain names that include its trademark, and is highly active on other social media networks, such as Facebook. The disputed domain name was registered on May 5, 2015, and currently resolves to a site that indicates the website is unavailable and that a website is coming soon. Little is known of the Respondent, who appears to be an individual residing in Florida, United States. 5. Parties’ Contentions A. Complainant The Complainant first maintains that the disputed domain name incorporates its famous name and registered trademark as its leading element and is obviously and deliberately confusingly similar to the same, and that the addition of the word “shopping” does not diminish this confusing similarity. Secondly, the Complainant asserts that the Respondent; is not using the disputed domain name in connection with any bona fide offering of goods and services or any legitimate noncommercial use; that the Respondent is not affiliated with the Complainant and has no permission to use its trademarks; and the Respondent is not known by the disputed domain name. The Complainant further asserts that the disputed domain name can only have been registered in bad faith and that it is, under the circumstances difficult or impossible to conceive what good faith use the disputed domain name could be put to, with the consequence that a finding of bad faith use is here mandated notwithstanding the fact that the disputed domain name currently resolves to an inactive web page. The Complainant also points out that the failure of the Respondent to answer two cease and desist communications in which the Complainant requested the transfer of the disputed domain name, is further evidence of the Respondent’s bad faith purpose. The Complainant thereupon asks that the disputed domain name be transferred to it. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On July 15, 2020, after the Notification of Respondent Default was sent to the Parties, the Respondent submitted an informal communication indicating that the disputed domain name was not being used and seeking a resolution to the present proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name begins with and contains the entirety of the Complainant’s distinctive and very well-known trademark, with the descriptive word “shopping” attached to it. The addition of “shopping” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. It follows that the Complainant has proven confusing similarity within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complaint makes clear that the Respondent is not affiliated with the Complainant and has no known right to make use of its trademarks in the disputed domain name or otherwise. There is, moreover, obviously no reason or basis to believe that the Respondent is known by the name “instagramshopping” or some variation thereof. Well established UDRP jurisprudence provides that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. “osama bin laden”,WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo,WIPO Case No. D2014-0225. The Complainant has here established such a prima facie case, and the Respondent has failed to answer the Complaint. Further, there is no evidence or indicia in the case file that would rebut or contradict the Complainant’s assertions as to the Respondent’s absence of any rights or legitimate interests in the disputed domain name. Under these circumstances it can be affirmed that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith The Complainant has here established that its name and trademark is distinctive, very widely known, and represents a major online presence and tool. The Respondent’s use of the Complainant’s trademark in the disputed domain name cannot have been serendipitous - it can only have been registered with knowledge of the Complainant’s rights and some bad faith intention to make use of the renown of the Claimant’s trademark and online presence. The addition of the word “shopping” to this famous trademark does not dissipate the Respondent’s bad faith inherent in the registration; on the contrary, it falsely implies that it may be linked to some shopping or commercial arm of the Complainant’s activity, and it indicates a possible improper commercial purpose. As to bad faith use, the totality of the circumstances here leads the Panel to adopt the Complainant’s argument that it “cannot conceive of any good faith use to which the [disputed] Domain Name could be put…”. See also, section 3.3, WIPO Overview 3.0. Furthermore, as the Complainant points out, the disputed domain name, although currently held passively, would absent transfer present an ongoing and obvious risk of active bad faith use. The Respondent’s failure to answer to cease and desist communications from the Complainant concerning the disputed domain name is further significant indicia of bad faith. It follows that the Complainant has proven bad faith use and registration within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision For all the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Nicolas Ulmer
Sole Panelist
Date: August 6, 2020
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