The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Ahmad Kharsah, Saudi Arabia. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020. The Center appointed Taras Kyslyy as the sole panelist in this matter on October 16, 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. Since its launch in 2010 it became a fast growing photo/video sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website, available at “www.instagram.com”, is ranked the 23rd most visited website in the world, according to web information company Alexa. The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including the following: − Saudi Arabian Trademark Registration No. 1436025386, INSTAGRAM, registered on October 7, 2015; − United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012. The disputed domain name The Complainant sent a cease and desist letter to the Respondent, however no reaction by the Respondent followed. 5. Parties’ Contentions A. Complainant The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names both incorporate the INSTAGRAM trademark in its entirety as their leading element, together with the descriptive term “shops”. The applicable gTLDs, in this case “.com” and “.net”, may be disregarded for the purposes of assessment under the first element, as they are viewed as standard registration requirements. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not been using or has made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its trademark, in a domain name or otherwise. The disputed domain names do not resolve to active web pages. The Respondent is not commonly known by the disputed domain names. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. The disputed domain names were registered and are being used in bad faith. The Respondent could not credibly argue that he did not have knowledge of the Complainant and its trademark when registering the disputed domain names in February 2017, by which time Complainant had amassed some 700 million active users. The non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The Complainant’s INSTAGRAM trademark is distinctive, is well known throughout the world, and is exclusively associated with the Complainant. Notwithstanding the Complainant’s efforts to resolve this matter prior to filing the Complaint, the Respondent failed to reply to the Complainant’s cease-and-desist letter, or to otherwise come forward with evidence of actual or planned good-faith use of the disputed domain names. The disputed domain names carry a risk of implied affiliation with the Complainant’s trademark, and there is no plausible good-faith use to which the disputed domain names could be put that would not have the effect of misleading consumers as to the source or affiliation of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., ”.com”, ”.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLDs “.com” and “.net” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case the disputed domain names incorporate the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that the Complainant’s trademark is recognizable within the disputed domain names and the addition of generic term “shops” does not preclude establishing the confusing similarity. Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Complainant has rights in its registered trademark. The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names. The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875). According to section 2.9 of the WIPO Overview 3.0 the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds this applies to the present case regarding the disputed domain name Also, the Panel finds that the Respondent has no right or legitimate interests in the disputed domain name Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According tosection 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain names confusingly similar to the Complainant’s trademark were registered in bad faith. According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the failure of the Respondent to address the Complainant’s cease and desist letter, and (iv) the implausibility of any good faith use to which the disputed domain name According to paragraph 4(b)(iv) of the Policy 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: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain name Considering the above, the Panel finds that both disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case 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 disputed domain names Taras Kyslyy
Sole Panelist
Date: October 26, 2020
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