The Complainant is Instagram, LLC, United States of America (“U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Privacy Administrator, Anonymize, Inc., U.S.; and WhoisGuard Protected, WhoisGuard, Inc., Panama / Kamil Abbasov, AzeriJob LLC, Azerbaijan / Vien Tran, Viet Nam / Modstas Geiga, UAB Modauksa, Lithuania / Yacine Fihri, Morocco. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 23, 2020, the Registrar NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. On October 28, 2020, the Registrar Epik, Inc. transmitted by email to the Center its verification response confirming that the Respondent Anonymize, Inc.is listed as the registrant for the disputed domain name The Center sent an email communication to the Complainant on November 2, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 4, 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 Respondents of the Complaint, and the proceedings commenced on November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. On November 22, 2020, the Respondent Kamil Abbasov indicated his willingness to transfer or cancel the disputed domain name The Center inadvertently did not provide all of the registrant and contact information disclosed by the Registrar NameCheap, Inc. to the Complainant. Accordingly, the Center sent another email communication to the Complainant on December 9, 2020, providing the complete registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the second amended Complaint on December 17, 2020. The Center again verified that the Complaint together with the amended Complaints 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 re-notified the Respondents of the Complaint, and the proceedings re-commenced on December 22, 2020. In accordance with the Rules, paragraph 5, the new due date for Response was January 11, 2021. Email communications were received from some of the Respondents between December 29, 2020 and on January 7, 2021 in which they indicated their willingness to transfer or cancel some of the disputed domain names. On December 30, 2020, the Center sent a possible settlement email to the Parties indicating if they wished to explore settlement options, the Complainant should submit a request for suspension. On January 5, 2021, the Complainant requested the Center to continue the proceeding. On January 12, 2021, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 21, 2021. 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 Launched in 2010, the Complainant, commonly known as “Insta” or “IG”, is an online photo and video sharing social networking application, presently being ranked the 25th most visited website in the world. The Complainant is the owner, amongst others, of the following trademark registrations (Annex 10 to the Complaint): - U.S. trademark registration No. 4146057 for INSTAGRAM, registered on May 22, 2012; - International trademark registration No. 1129314 for INSTAGRAM, registered on March 15, 2012; - U.S. trademark registration No. 5061916 for INSTA, registered on October 18, 2016; and - European Union trademark registration No. 017946393 for IG, registered on January 31, 2019. The disputed domain names were registered on and are presently used in connection with: Disputed Domain Name Registration Date Present Use November 26, 2017 No active webpage April 17, 2020 No active webpage June 2, 2020 Pointing to a potentially harmful webpage which is blocked due to potential phishing scams July 31, 2017 No active webpage March 28, 2020 Active webpage reproducing the Complainant’s trademark and offering services to increase the number of followers. At the time of filing of the Complaint, the disputed domain names The Complainant asserts to be one of the world’s leading providers of online social networking services and applications, actively promoting and using its INSTAGRAM, INSTA and IG trademarks throughout the world. The Complainant submits that the disputed domain names are subject to common control by either the same person or connected parties and for reasons of fairness, equity and efficiency, the Complainant requests consolidation of multiple Respondents to the same Complaint, given that: (a) all of the disputed domain names were previously or are still pointing to websites with identical layout, that purported to offer Instagram “followers”, “likes”, “views” and “comments” for free while redirecting users to similar pages displaying PPC links (Annex 2 to the Complaint); (b) all of the disputed domain names target the Complainant’s IG or INSTA trademarks; (c) four out of five of the disputed domain names contain the word “follow” or “followers”; and (d) all of the disputed domain names were registered making use of privacy protection services, and four of them use the same Registrar and privacy service. The disputed domain names are, according to the Complainant, confusingly similar to the Complainant’s trademarks, creating a likelihood of confusion given the reproduction of its trademarks which are clearly recognizable as the leading element of the disputed domain names, not adding any distinctiveness thereto the addition of the descriptive terms “follow”, “followers”, “for”, “plus” and “learn”. Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names given that: (a) the Respondents are not licensees of the Complainant, nor have they been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks; (b) the Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy nor have the disputed domain names been used for legitimate noncommercial or fair use purpose in accordance with paragraph 4(c)(iii) of the Policy given that they resolve or previously resolved to websites purporting to offer Instagram “followers”, “likes”, “views” and “comments” for free, while systematically directing Internet users to webpages displaying PPC links; (c) the Respondents cannot credibly claim to be commonly known by the disputed domain names, or a name corresponding to the disputed domain names. As to the registration of the disputed domain names in bad faith, the Complainant asserts that the Respondents knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering that it has acquired considerable goodwill and renown worldwide. Further, the Respondents’ intent to target the Complainant can easily be inferred from the contents that used to be available at the disputed domain names, which explicitly referenced the Complainant and reproduced its trademark and logo, also unduly profiting from PPC links. The Complainant further submits that the Respondents’ choice to retain privacy shields to conceal their true identities is a further indicative of the Respondents’ bad faith. B. Respondents On November 22, 2020, Kamil Abbasov, the named Respondent for the On December 29, 2020, Modestas Geiga1 , the named Respondent for the On December 29, 2020, Yacine Fihri, the named Respondent for the On January 6, 2021, Kamil Abbasov sent another message stating that he is not the same person as Modestas Geiga and that he is not related to the other disputed domain names, to which Modestas Geiga replied on the same day stating “Right, I have just copied the message for a faster response”. Also on January 6, 2021, the registrant for the On January 7, 2021, Kamil Abbasov sent another message to the Center reiterating his agreement with the transfer of cancellation of the Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names. Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents. A. Consolidation of Multiple Respondents The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the five disputed domain names dealt with at the same procedure, given that: (a) all of the disputed domain names were previously or are still pointing to websites with identical layouts offering Instagram “followers”, “likes”, “views” and “comments” for free while redirecting users to similar pages displaying PPC links (Annex 2 to the Complaint); (b) four out of the five disputed domain names share a similar naming pattern; (c) all of the disputed domain names were registered making use of privacy protection services; and (d) four of the disputed domain names use the same Registrar and privacy service. The similar messages submitted agreeing with the transfer or cancellation of some of the disputed domain names is a further indicative of the common control. Although Kamil Abbasov stated on January 6, 2021 that he is not the same person as Modestas Geiga and Modestas Geiga just copied his message, and Modestas Geiga echoed his message on the same day, the Panel notes that Modestas Geiga sent an email on December 29, 2020 which is almost identical to the email of Kamil Abbasov dated November 22, 2020 that was sent to the Center only. Therefore, The Panel is not convinced that Kamil Abbasov and Modestas Geiga are not connected. This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties. B. Identical or Confusingly Similar The Complainant has established its rights in the IG, INSTA and INSTAGRAM trademarks (Annex 10 to the Complaint). The Panel finds that the disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of the terms “follow”, “followers”, “for”, “plus” and “learn” does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7.) The first element of the Policy has therefore been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel notes that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. The Respondents, in their informal communications have agreed to the transfer or cancellation of some of the disputed domain names and have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The disputed domain names were previously or are still pointing to websites that purported to offer Instagram “followers”, “likes”, “views” and “comments” for free while redirecting users to similar pages displaying PPC links. Indeed such use cannot be considered here a bona fide offering of goods or services nor legitimate noncommercial or fair use under the Policy. Therefore, the Panel finds that the Respondents lack rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met. D. Registered and Used in Bad Faith Launched in 2010, the Complainant is one of the world’s leading providers of online social networking services and applications, actively promoting and using its INSTAGRAM, INSTA and IG trademarks throughout the world. The Complainant’s earliest trademark registration in INSTAGRAM dates back to 2012, and the Complainant has registered trademarks in INSTA and IG since 2016 and 2019 respectively. The evidence provided by the Complainant shows that the terms “Insta” or “IG” commonly refers to “Instagram”. The disputed domain names The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the use of the disputed domain names in connection with websites with identical layout that purported to offer Instagram “followers”, “likes”, “views” and “comments” for free while redirecting users to similar pages displaying PPC links (Annex 2 to the Complaint), characterizes the Respondents’ intent of commercial gain by profiting from the notoriety of the Complainant’s trademarks. For the reasons above, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Further, the Panel finds that the currently inactive use of three of the disputed domain names pointing to error pages and one disputed domain name displaying a warning message for potential phishing does not prevent a finding of bad faith. The third element of the Policy has therefore been met. 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 Wilson Pinheiro Jabur 1 The Panel notes that the Registrar, NameCheap, Inc., has confirmed that the registrant of the disputed domain name for the
(iii) the disputed domain names have been registered and are being used in bad faith.
Sole Panelist
Date: February 12, 2020
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