The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Hamid Sarwary, Norway. 2. The Domain name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 the Complainant on July 4, 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 July 6, 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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2020. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on August 31, 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, Instagram, LLC, is a world-renowned online photo- and video-sharing social networking application launched in 2010. The application and services are rendered under the name “Instagram”. The trademark INSTAGRAM has been recognized as a leading global brand. The Complainant is the owner of various registrations worldwide for the trademark INSTAGRAM, including United States trademark registration number 4,146,057 registered on May 22, 2012 and European Union trademark registration number W01129314 registered on March 15, 2012. The Complainant owns the domain name The Respondent registered the disputed domain name on November 7, 2019. The disputed domain name resolves to a website that is a clone of the Complainant’s website “www.atozinstragram.com.au”. The Complainant sent a cease and desist letter by email on February 26, 2020 to the Respondent through the privacy service with which the disputed domain name was registered. The Complainant notified its trademark rights and requested the voluntary transfer of the disputed domain name. It sent a reminder on March 5, 2020. The Respondent did not reply. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name reproduces its famous INSTAGRAM trademark in its entirety and is readily recognizable so that the adjunction of the term “atoz” does nothing to reduce its confusing similarity with the INSTAGRAM trademark, all the more so since this prefix means “A-to-Z”. The Complainant argues that the website related to the disputed domain name identically reproduces the contents of one of its own websites available at “www.atozinstragram.com.au”. The Complainant has not licensed or otherwise permitted the Respondent to use the INSTAGRAM trademark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain name. According to the Complainant, it is clear that the choice of the famous INSTAGRAM trademark and the use of the disputed domain name to resolve to a “clone” of the Complainant’s website aims at creating a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy. In addition, the Complainant alleges that given its worldwide reputation and the ubiquitous presence of the INSTAGRAM trademark on the Internet, the Respondent was aware of the INSTAGRAM trademark long before registering the disputed domain name and the use of this disputed domain name to resolve to a “clone” website constitutes registration and use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent 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 domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns various trademark registrations for the mark INSTAGRAM. The disputed domain name As a rule, UDPR panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the trademark INSTAGRAM is clearly recognizable in the disputed domain name. The mere addition of the locution “atoz” does not change the overall impression produced by the disputed domain name and is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. Furthermore, the use of the disputed domain name in connection to a website that reproduces the content of the Complainant’s website available at “www.atozinstagram.com.au” supports the apparent lack of rights or legitimate interests of the Respondent in the disputed domain name. Indeed, impersonating the Complainant can hardly be a legitimate or fair use. Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the well-known character of the INSTAGRAM trademark, the Panel accepts that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name in November 2019. The Respondent therefore registered the disputed domain name in bad faith. The Respondent reproduced the content of an official website of the Complainant to such extent that the Respondent’s website is a “clone” of the Complainant’s website. The Panel finds that in using the disputed domain name in connection with such a “clone” website, the Respondent intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website within the meaning of paragraph 4(b)(iv) of the Policy. What commercial gain the Respondent intends to derive from such use of the disputed domain name is not known, but the Panel considers that the risk of a fraudulent scheme on the part of the Respondent is serious, as “clone” websites are often accompanied by fraudulent schemes (see Numis Securities Limited v. WhoisGuard, Inc. / Get AnySite,WIPO Case No. D2020-0937 and Marriott International, Inc., Marriott Worldwide Corporation and The Ritz-Carlton Hotel Company, LLC v. Van C Bethancourt Jr., Andre Williams,WIPO Case No. D2018-2428). In the case at hand, the Complainant is under the threat that the Respondent’s “clone” website may serve as a support for a potential fraudulent email scheme targeting the Complainant’s users, in an attempt to extract personal data or money or both. The Panel accepts therefore that the disputed domain name has been used in bad faith. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) 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 Anne-Virginie La Spada
Sole Panelist
Date: September 14, 2020
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