The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Orhan Bektaş, Germany. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names and in connection with a third domain name. On July 20, 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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent sent an email communication to the Center on August 28, 2020 but did not file a formal response to the Complaint. Accordingly, the Center notified the Commencement of Panel Appointment on September 8, 2020. On September 14, 2020 the Complainant requested to withdraw its Complaint against the third domain name and on September 29, 2020 the Center confirmed that the proceeding against the third domain name was terminated, but the proceedings involving the Domain Names remained on foot. The Center appointed Nicholas Smith as the sole panelist in this matter on October 6, 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 United States company that operates a well-known social media network under the trade mark INSTAGRAM (the “INSTAGRAM Mark”) that specialises in online photo and video sharing. The Complainant’s Instagram product was launched in 2010 and has more than 1 billion monthly active accounts. Its website at “www.instagram.com” is the 26th most visited website in the world. The Complainant is the owner of trade mark registrations in the United States and the European Union for the word mark INSTA (the “INSTA Mark”) including European Union trade mark No. 014810535 registered on May 23, 2018. It is also the owner of trade mark registrations in the United States and the European Union for the INSTAGRAM Mark including United States trade Mark No. 4146057 registered on May 22, 2012. The Domain Names The Complainant makes the following contentions: (i) that the Domain Names are identical or confusingly similar to the Complainant’s INSTA or INSTAGRAM Marks; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are subsequently being used in bad faith. The Complainant is the owner of the INSTA and INSTAGRAM Marks, having registered these marks in the United States and the European Union. The Domain Names are confusingly similar to the INSTA or INSTAGRAM Marks as they incorporate either the INSTA or INSTAGRAM Mark in its entirety with the addition of the descriptive terms “yardim” (meaning “help” in Turkish) and “media pro”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent has no licence or right to use the Domain Names and has never been granted any permission by the Complainant for the registration of the Domain Names. The use of the Domain Names to sell Instagram followers involves the Respondent engaging in fraudulent conduct that is against the Instagram terms of service. Such a use is not bona fide. The Domain Names were registered and are being used in bad faith. The Respondent is aware of the Complainant as he registered and used the Domain Names in order to offer a service that likely involves some form of fraudulent operation that is in breach of the Complainant’s terms of service. B. Respondent The Respondent did not formally reply to the Complainant’s contentions but sent communications to the Center on August 28, September 19 and September 24, 2020. The latter two communications are not substantive but the August 28, 2020 communication substantively addresses the Complaint as follows: “Of the mentioned domains, only instamediapro.com belongs to me. The aforementioned instamediapro.com is an important part of my company's main source of income and is a domain registered with my company for 2.5 years. This domain does not directly infringe anyone's intellectual property. For this reason, I request that this complaint be reevaluated.” The Panel notes that the Registrar in its verification response confirmed that the Respondent is listed as the registrant of both the Domain Names. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the INSTA and INSTAGRAM Marks, having registered these marks in the United States and the European Union. The Domain Names consist of the INSTAGRAM Mark with the additional descriptive word, “yardim” (translated into English as “help”) and the INSTA Mark with the additional descriptive words “media pro“ (and in both cases the gTLD “.com”, which may be discounted for the purposes of comparison). The addition of a descriptive term to a complainant’s mark does not prevent confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that each of the Domain Names is confusingly similar to either the Complainant’s INSTA Mark or INSTAGRAM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or (iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the INSTA or INSTAGRAM Marks or a mark similar to the INSTA or INSTAGRAM Marks. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Names to operate websites that purport to be able to supply the customer with Instagram “likes” and “followers”. If such services are not real, then the Respondent is engaging in fraudulent conduct. If such services are real then the Respondent, in providing these likes, is engaged in the process of making up fake accounts and/or hacking into existing accounts and breaching the Complainant’s terms of service. Such conduct may be fraudulent and is not a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b)): (i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or (ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark 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 Names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Panel finds that the Respondent was aware of the Complainant at the time the Domain Names were registered. The Respondent’s Websites purported to offer a service where the Respondent would generate “likes” and “followers” for a user’s Instagram account. The registration of the Domain Names in awareness of the Complainant and its rights in the INSTA or INSTAGRAM Marks and in the absence of rights or legitimate interests amounts to registration in bad faith. The Respondent is using the Domain Names for websites purporting to offer services that involve the creation of false Instagram accounts. In previous UDRP decisions such conduct has been found to be evidence of registration and use in bad faith, see Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org),WIPO Case No. D2020-0521, in which the panel described the then respondent’s conduct (identical to the present Respondent’s conduct) as follows: “The Panel is not convinced by the arguments of the Respondent, which are not supported by any evidence or explanation how its users would receive large numbers of genuine “followers”, “likes”, “views” and “comments” in such short periods of time legitimately and without breaching the rules of conduct established by the Complainant for the users of its Instagram service. The Panel is not aware how this could possibly happen without some type of fraud or other illegitimate conduct. The elements of all of the disputed domain names and the content and appearance of the associated websites shows that they are all focused on the Complainant and its Instagram service, which makes the statement of the Respondent that it was not targeting the Complainant simply not credible.” and “Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the INSTA and INSTAGRAM trademarks (or its abbreviated form INSTA) in an attempt to attract traffic to the disputed domain names and to offer Internet users illegitimate services that destroy the authenticity of the user experience sought by Instagram and damage the reputation of the Complainant.” The Panel agrees with the conclusions of the panel above and finds that the Respondent is using the Domain Names in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under 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 Domain Names, Nicholas Smith
Sole Panelist
Date: October 9, 2020
Full & Egal Universal Law Academy