Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Keakahiwalani Landschoot, 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 August 20, 2020. On August 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 August 25, 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 August 26, 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 August 31, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was September 20, 2020. Respondent sent an email to the Center on September 1, 2020, explaining that it would be willing to explore a settlement. Complainant wished to proceed with the UDRP proceeding for a decision to be rendered. Accordingly, the Center notified the Parties about the Panel appointment on September 21, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 28, 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 operates an online photo and video sharing social networking application. Complainant is the proprietor of numerous trademark registrations for INSTAGRAM (the “INSTAGRAM Mark”), including the following: - United States Registration No. 4146057 for INSTAGRAM (word mark), registered on May 22, 2012, for goods in class 9, (claiming a date of first use in commerce of October 6, 2010); - European Union Trade Mark No. 014493886 for INSTAGRAM (word mark), registered on December 24, 2015, for goods and services in classes 25, 35, 38, 41, and 45; and - International trademark No. 1129314 for INSTAGRAM (word mark), registered on March 15, 2012, for goods and services in classes 9 and 42. Complainant operates its primary business website at “www.instagram.com”. The disputed domain name was registered by Respondent on September 25, 2018. It resolves to a website featuring pay-per-click advertising and a statement asserting that the disputed domain name may be for sale. The record contains copies of a cease-and-desist letter sent by Complainant to the Registrar dated July 25, 2020, and a screenshot of Complainant’s subsequent message to Respondent using the Registrar’s online form. The record does not contain any replies to these communications. 5. Parties’ Contentions A. Complainant Under the first element, Complainant states that it is a world-renowned online photo and video sharing social networking application. Launched in 2010 and acquired by Facebook in 2012, the platform achieved 800 million monthly users by 2017. Complainant’s website at “www.instagram.com” is ranked the 30th most-visited in the world and the mobile app is the 5th most-downloaded in the world. The INSTAGRAM Mark has been central to Complainant’s business and Complainant has registered a number of domain names containing the INSTAGRAM Mark using both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). Complainant owns registrations for the INSTAGRAM Mark in many jurisdictions around the world. The disputed domain name is identical or confusingly similar to Complainant’s INSTAGRAM Mark because it contains the Mark in its entirety, along with the descriptive term “affiliates”. Under the second element, Complainant states that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name resolves to a parking page displaying PPC links, and Respondent is relying on Complainant’s goodwill and renown to attract Internet users to its website for financial gain. Respondent is not commonly known by the disputed domain name, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Under the third element, Complainant states that the INSTAGRAM Mark is inherently distinctive and well known around the world. It has been continuously and extensively used since 2010 in connection with its online photo-sharing social network, and has acquired considerable reputation and goodwill worldwide. Complainant’s registration of the trademarks predates Respondent’s registration of the disputed domain name. Respondent cannot credibly argue that he did not have knowledge of Complainant’s trademarks at the time that the disputed domain name was registered. The use of the term “affiliates” alongside Complainant’s Mark in the disputed domain name carries with it the risk of implied affiliation with Complainant. The use of the disputed domain name to redirect Internet users to parking pages displaying sponsored links is clearly intended for Respondent’s commercial gain and constitutes bad faith. Finally, Respondent failed to respond to Complainant’s communication through the Registrar’s online form, which is an additional indicator of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the INSTAGRAM Mark through registrations in numerous jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRO Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s INSTAGRAM Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the INSTAGRAM Mark. The disputed domain name contains the INSTAGRAM Mark in its entirety. The addition of the dictionary term “affiliates” does not prevent a finding of confusing similarity with the INSTAGRAM Mark, which is clearly recognizable within the disputed domain name. Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” Furthermore, it is the well-established view of UDRP panels that the addition of a gTLD to a domain name does not prevent the domain name from being confusingly similar to the complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which contain Complainant’s distinctive INSTAGRAM Mark together with the term “affiliates,” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the INSTAGRAM Mark with the permission of Complainant. There is no evidence of legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name resolves to a website featuring pay-per-click links. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0, section 2.1, and cases cited thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the confusing similarity between Complainant’s Mark and the disputed domain name and the fact that the disputed domain name resolves to a website offering pay-per-click links and includes an offer to sell the disputed domain name, there can be no finding of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or (ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds bad faith registration under the Policy. Complainant’s rights in the INSTAGRAM Mark predate by nearly a decade the registration of the disputed domain name. Considering the visibility of Complainant’s platform, the Panel finds it implausible that Respondent was unaware of the INSTAGRAM Mark. The disputed domain name contains Complainant’s Mark in its entirety, with the addition of the term “affiliates”, which does not prevent a finding of confusing similarity and indeed strengthens the association with Complainant. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use by establishing and operating a website at “www.instagramaffiliantes.com” that features pay-per-click links and includes an offer to sell the disputed domain name. Additionally, a finding of bad faith is supported by Respondent’s failure to respond to Complainant’s cease-and-desist letter and additional communication through the Registrar’s online form. Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 12, 2020
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