The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are WhoisGuard, Inc., Panama / Name Redacted1 , Senol Sahin, thepicdeer.com, Turkey, Ekrem Gueltekin, Austria and Ekrem Gultekin, Germany. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 27, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 27 and 28, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all disputed domain names are under common control; and/or to file a separate complaint. The Complainant filed an amended Complaint on November 6, 2020. The Registrar Nics Telekomunikasyon A.S. also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Complainant on November 6, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on November 9, 2020. The Respondents did not formally comment on the language of the proceeding. However, on November 6, 2020, a communication in English was received from the email belonging to one of the Respondents and on November 7, 2020, the same Respondent indicated a potential identity theft of which the Center acknowledged receipt. 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. On November 14, 2020, an email was received in Turkish from the Respondent Senol Sahin indicating that it was the only owner of the disputed domain names and that the remaining Respondent Ekrem Gueltekin was not aware of the registration of the disputed domain names. Further informal emails in Turkish were received from the Respondent Senol Sahin on November 20 and December 18, 2020, however, none of the Respondents submitted a formal response. Accordingly, the Center notified to the Parties that it was proceeding to panel appointment on December 4, 2020. The Center appointed Kaya Köklü as the sole panelist in this matter on December 18, 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 based company, which provides online photo and video sharing services. Since 2010, these services are provided through its internationally known and popular online platform, which primarily consists of a mobile application and a website. The Complainant is the owner of the word marks INSTAGRAM, INSTA and IG. Its trademarks are registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registration No. 4146057 for INSTAGRAM, registered on May 22, 2012 and No. 5061916 for INSTA, registered on October 18, 2016. Also, the Complainant is the owner of the European Union Trademark Registration No. 014493886 for INSTAGRAM, registered on December 24, 2015, and No. 014810535 for INSTA, registered on May 23, 2018, and No. 017946393 for IG, registered on January 31, 2019. The registered trademarks cover various goods and services primarily related to online social networking services. The Complainant further holds and operates its website at “www.instagram.com”, which is ranked as one of the most visited websites worldwide. Furthermore, the Complainant is the registered owner of many additional domain names consisting of or including its INSTAGRAM, INSTA or IG trademarks (Annex 13 to the Complaint). The registration dates of the disputed domain names are as follows: [1] August 29, 2019 [2] May 10, 2020 [3] February 6, 2020 [4] November 16, 2019 [5] August 30, 2019 [6] December 20, 2019 [7] December 20, 2019 [8] December 20, 2019 [9] December 20, 2019 [10] August 30, 2019 [11] March 7, 2020 [12] May 22, 2020 [13] May 22, 2020 [14] January 24, 2019 [15] January 24, 2019 The Respondents are composed of various individual persons from Turkey, Austria and Germany as well as a domain name privacy service. One of the Respondents is an individual, whose name is redacted as a third party may probably have used his or her identity for registering the disputed domain name No. 2 without her or his consent. According to the documents provided by the Complainant, all disputed domain names resolved to a website in English language at “www.pic-stalker.com”, or at least to a website with a similar look and feel, which offered a tool to search and download profile pictures, images, videos and stories from users of the Complainant’s platform (Annexes 2 – 7 to the Complaint). The Panel has visited the websites linked to the disputed domain names and notes that at the time of the decision none of the disputed domain names are actively used anymore. 5. Parties’ Contentions A. Complainant The Complainant requests the transfer of the disputed domain names. The Complainant is of the opinion that the disputed domain names are confusingly similar to their INSTAGRAM, INSTA and IG trademarks. Furthermore, the Complainant argues that the Respondents have no rights or legitimate interests in respect of the disputed domain names. It is rather argued that the disputed domain names falsely suggest that there is some official or authorized link between the Complainant and the Respondents. Finally, it is argued that the Respondents have registered and are using the disputed domain names in bad faith. The Complainant particularly argues that the Respondents must have been well aware of the Complainant’s trademarks, when registering and using the disputed domain names. B. Respondent The Respondents did not formally reply to the Complainant’s contentions. One of the Respondents in his/her emails in English dated November 6 and 7, 2020, indicates that he/she has no knowledge of the disputed domain names. In his informal email communications to the Center of November 14 and 20, 2020 and December 18, 2020, the Respondent Senol Sahin alleged in Turkish that there are many domain names registered, which are similar to the disputed domain names and that the disputed domain names were registered only for test purposes. The Respondent further indicated that any use of the disputed domain names has been stopped in the meantime. In addition, he indicates that the Respondent “Mr. Ekrem” is not concerned with any of the disputed domain names and that the Respondent Senol Sahin is the sole owner of the disputed domain names. 6. Discussion and Findings 6.1. Procedural Issues A. Language of the Proceeding The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be English. Although the language of the registration agreement of the disputed domain names No. 12 and 13 is Turkish (with the other disputed domain names having English registration agreements), the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel particularly notes that the Respondents were given the opportunity to respond in Turkish and that this opportunity remained unused by the Respondents. Also, the Panel notes that it remained undisputed that all disputed domain names resolved to a website in English language. Hence, the Panel concludes that the Respondents are able to read, write and understand English. Consequently, the Panel is convinced that the Respondents will not be prejudiced by a decision being rendered in English. B. Consolidation of Multiple Respondents As neither the Policy nor the Rules provides provisions for the consolidation of claims against multiple respondents into a single administrative proceeding, UDRP panels generally apply the principles for consolidation as set out at section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Section 4.11.2 of the WIPO Overview 3.0 states the following: “Where 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.” Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. In this regard, previous UDRP panels particularly considered the following aspects in determining whether a consolidation is appropriate: similarities in or relevant aspects of (i) the registrants’ contact information (ii) the content or layout of websites corresponding to the disputed domain names, (iii) whether the registrants are targeting a specific sector, and (iv) the relevant language/scripts of the disputed domain names. In light of the criteria set out above, there are in view of the Panel strong indications that all disputed domain names are under common control. The Panel finds that the Complainant has provided sufficient evidence that at least three of the Respondents, namely Senol Sahin, Ekrem Gultekin and Ekrem Gueltekin are either one and the same person, or are at least closely linked to each other. This is particularly likely, as it remained unsolicited by the Respondents that all disputed domain names were linked to the same website or at least to a website with a similar look and feel, which offered a tool to search and download profile pictures, images, videos and stories from users of the Complainant’s platform. Furthermore, the Respondent affirmed in his informal email communication of November 14, 2020 that he is the owner of the disputed domain names and that he stopped using the disputed domain names. The Panel concludes that the Respondents must act collaboratively and, hence, accepts that all disputed domain names are under common control. Additionally, the Panel is convinced that in the present case a consolidation of multiple respondents is procedurally efficient, fair, and reasonable to all parties. The Panel therefore, for the purpose of this decision, accepts the case to be dealt with in a consolidated Complaint and will refer, whenever appropriate, to “the Respondent” in the following. 6.2. Substantive Issues According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no formal Response has been submitted. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in INSTAGRAM, INSTA and IG. As evidenced in the Complaint, the Complainant is the owner of various INSTAGRAM, INSTA and IG trademarks, which, according to the case file (Annex 15 to the Complaint) are registered in many jurisdictions, including in the European Union. In light of this pre-assessment, the Panel notes the following: The disputed domain name No. 1 fully incorporates the mark INSTAGRAM as a distinctive part of the domain name. The disputed domain names No. 2, 3, 4, 5, 6, 7, 8, 9, 10, 14, and 15 fully incorporate the mark INSTA as a distinctive part of the domain name. The disputed domain name No. 11 fully incorporates the mark IG. The disputed domain name No. 12 incorporates “i-g”. The disputed domain Name No. 13 incorporates “instegram”. In light of the above, the Panel finds that the disputed domain name No. 1 is confusingly similar to the Complainant’s trademark INSTAGRAM, as it fully incorporates the Complainant’s trademark. As stated at 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 would generally not prevent a finding of confusing similarity. The mere addition of the descriptive and dictionary term “beautiful” within the disputed domain name does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM trademark. In view of the Panel, the same assessment applies to the disputed domain names No. 2, 3, 4, 5, 6, 7, 8, 9, 10, 14, and 15, which fully incorporate the Complainant’s INSTA trademark. Additionally, the Panel finds that the disputed domain names No. 11 and 12 are confusingly similar to the Complainant’s IG trademark. The disputed domain name No. 11 fully incorporates the Complainant’s IG trademark. The disputed domain name No. 12, where the Complainant’s IG trademark is separated by a hyphen, is in view of the Panel confusingly similar as the Complainant’s IG trademark still remains recognizable. Finally, the Panel finds that the disputed domain name No. 13 is also confusingly similar to the Complainant’s INSTAGRAM trademark, as it contains a mere misspelling of the Complainant’s INSTAGRAM trademark by using an “e” instead of an “a”. In view of the Panel, the Complainant’s INSTAGRAM trademark is still recognizable within the disputed domain name No. 13. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy with regard to all disputed domain names. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names. While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use any of the Complainant’s INSTAGRAM, INSTA and IG trademarks in a confusingly similar way within the disputed domain names. There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. In the absence of a response, the Respondent has additionally failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain names. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s INSTAGRAM, INSTA and IG trademarks, apparently for illegitimate commercial gain, particularly for the following reasons. At the date of registration of the disputed domain names, the Respondent was obviously well aware of the Complainant’s INSTAGRAM, INSTA and IG trademarks. Consequently, the Panel is convinced that the Respondent has registered the disputed domain names in bad faith. Furthermore, the way of using the Complainant’s trademarks on the websites linked to the disputed domain names (Annexes 2 – 7 to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademarks as the distinctive part of the disputed domain names to target and mislead Internet users who are searching for services provided by the Complainant. The Panel also notes that the Respondent used privacy services when creating the disputed domain names. Although privacy services might be legitimate in many cases, it is difficult for the Panel to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names, the content as well as the design of the Respondent’s corresponding websites, rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant. In view of the Panel, all this strongly indicates the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s fanciful INSTAGRAM, INSTA and IG trademarks. The fact that the disputed domain names are currently inactive does not change the Panel’s findings in this respect. Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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, Kaya Köklü 1 As briefly described in Section 4 of this decision, the record indicates a third party may have used the named Respondent’s name in registering the disputed Domain Name without the named Respondent’s consent. The Panel has accordingly decided to redact the Respondent’s name from the caption and body of this decision. However, the Panel has included in Annex 1 to this decision an instruction to the Registrar which includes the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published given the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: December 28, 2020
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