The Complainant is Instagram, LLC, United States of America (“United States” or “US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Anas Abdullah, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2020. The Center appointed Mihaela Maravela as the sole panelist in this matter on December 2, 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 company incorporated in the US. It is a renowned online photo and video sharing social networking application. Launched in 2010, it currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. Instagram’s website available at “www.instagram.com” is ranked as the 25th most visited website in the world and 20th in Australia according to web information company Alexa. Currently available in over 31 languages, the Instagram app is the 6th most downloaded application in the world and 7th in Australia as per App Annie Top App rankings in 2020. In November 2019, Instagram launched “Instagram Reels”, a new video-music feature. The Complainant is the owner of the European Union Trade Mark registration consisting of IG with registration No. 017946393, registered as of January 31, 2019. The disputed domain name was registered on November 13, 2019 and it does not resolve to an active page. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to its trademark IG, which is generally used for the abbreviation of “Instagram”, as the disputed domain name incorporates the IG trademark in its entirety with the addition of the term “reels” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant argues that its trademark IG is clearly recognizable as the leading element of the disputed domain name and where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as “reels”, would not prevent a finding of confusing similarity under the first element. Regarding the second element, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its trademark, in a domain name or otherwise. The passive holding of the disputed domain name cannot be considered as a bona fide offering of goods or services. Moreover, the Complainant argues that the Respondent cannot conceivably claim that he is commonly known by the disputed domain name, neither can the Respondent assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Also, the fact that the disputed domain name falsely suggests affiliation with the Complainant will generally exclude any possible fair use as per section 2.5 of the WIPO Overview 3.0. In what concerns the third element, the Complainant contends that the disputed domain name was registered in bad faith as the Complainant’s IG trademark is well-known throughout the world as a common abbreviation for “Instagram” and the term IG REELS is a highly distinctive term that is exclusively associated with the Complainant and its video-music feature “Instagram Reels”, and that it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s IG trade mark (notably in combination with the term “reels”) at the time of registration of the disputed domain name. In addition, the Complainant argues that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering not only the disputed domain name but also another two trademark abusive domain names, for the purpose of preventing trademark owners from reflecting their trademarks in corresponding domain names. Further, the Complainant argues that the Respondent is using the disputed domain name in bad faith as the Complainant’s IG trademark is well-known internationally and the term IG REELS, as reflected in the disputed domain name, is exclusively associated with the Complainant and its “Instagram Reels” feature, hence, when confronted with the combination of the Complainant’s IG trademark together with the term “reels”, many Internet users would be easily confused and wrongly assume that the disputed domain name is “affiliated” or otherwise endorsed by the Complainant. Moreover, the Respondent failed to reply or to provide any evidence of actual or contemplated good-faith use of the disputed domain name further to the Complainant’s cease and desist letter and in light of the nature of the disputed domain name itself, it carries with it a high risk of implied affiliation with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the IG trademark. Also, as per the unrebutted evidence submitted by the Complainant in Annex 6, the Panel considers that the “ig” term is used for the abbreviation of INSTAGRAM, as similarly held in Instagram, LLC v. Orhan Uzdu,WIPO Case No. D2019-2806. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side 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”. Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here the disputed domain name wholly incorporates the Complainant’s IG trademark in addition to the term “reels”, which is associated with the Complainant, according to the unrebutted evidence submitted by the Complainant. This addition does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. “The addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity”, see section 1.8 of the WIPO Overview 3.0. It is well accepted by UDRP panels that a gTLD, such as “.com”, is typically disregarded when assessing whether a domain name is identical or confusing similar to a trademark. This Panel concludes that the disputed domain name is identical to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademark IG, and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “igreels”. See ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957. In addition, the Panel notes that in this case, the nature of the disputed domain name carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0. By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. The fact that the disputed domain name is confusingly similar to the Complainant’s trademarks and that it was registered shortly after the launch of “Instagram Reels”, a video-music feature of Instagram, indicate not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. Under these circumstances, it is unlikely that the Respondent was unaware of the Complainant’s rights when it registered the disputed domain name. The Respondent provided no explanation as to why he registered the disputed domain name. The Respondent has failed to make to date any genuine use of the disputed domain name. Passive holding of the disputed domain does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T,WIPO Case No. D2009-0938). Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain name will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” The following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name: - the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN,WIPO Case No. D2013-2100. In the Panel’s view these circumstances lead to a finding of registration and use in bad faith of the disputed domain name. Consequently, the Panel ascertains that the disputed domain name was registered and is being used in bad faith. 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, Mihaela Maravela
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; nor did the Respondent provide an answer to the cease and desist letter sent by the Complainant;
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
Sole Panelist
Date: December 23, 2020
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