The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States /Adana adana, adana , Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 the Complainant on November 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 25, 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 5, 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 The Complainant, launched in 2010 and acquired by Facebook in 2012, is a highly popular online social network for photo and video sharing. It has been rated the 30th most visited website in the world, with more than 1 billion monthly active users. The Complainant has registered the trademark INSTAGRAM worldwide. A selection of trademarks representative for the purposes of the present proceeding is as follows: INSTAGRAM, United States Patent and Trademark Office (USPTO), registered May 22, 2012, registration number 4146057, in class 9; INSTAGRAM, European Union Intellectual Property Office (EUIPO), registered December 24, 2015, registration number 014493886, in classes 25, 35, 38, 41, 45; INSTAGRAM, EUIPO, registered March 15, 2012, registration number 1129314, in classes 9 and 42. The Complainant owns a number of domain names incorporating its trademark including The Respondent has not provided any background information, except for the purported contact details provided to the Registrar at the time of registration of the disputed domain name on August 17, 2020. The disputed domain name has previously resolved to a website displaying a selection of links. 5. Parties’ Contentions A. Complainant The Complainant contends that it has the requisite rights in its registered trademark INSTAGRAM and that the disputed domain name is identical or confusingly similar to that trademark. The generic Top-Level Domain (“gTLD”) attaching to the disputed domain name is not relevant to the determination of confusing similarity. The disputed domain name contains recognisably the Complainant’s trademark in its entirety, accompanied by the descriptive terms “security” and “manager”. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate such rights or legitimate interests. The disputed domain name resolved previously to a parking page displaying pay-per-click links, which, since it is based upon the Complainant’s trademark, cannot be classed as bona fide use. The Respondent cannot legitimately claim to be commonly known by a name similar to the disputed domain name, and the name it has given to the Registrar is different. There has been no legitimate noncommercial or fair use of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is so well known that the Respondent cannot reasonably have been unaware of it at the time of registration of the disputed domain name. The disputed domain name has been used in bad faith because it has resolved to a website offering The Complainant contends that, in the circumstances of this dispute, the Respondent’s use of a privacy service to conceal its identity, and the provision of a postal address that the Complainant says is ineffective, is further evidence of the Respondent’s bad faith. The recent discontinuance of the disputed domain name from resolving to a pay-per-click website, and becoming passively held, represents a continuance of the Respondent’s bad faith. The Complainant has cited previous decisions under the Policy that it considers relevant to its position. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy states that a Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.” The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar The Panel is satisfied by the evidence presented that the Complainant has the requisite rights in the trademark INSTAGRAM. The gTLD “.com” in the disputed domain name is generally disregarded in the determination of confusing similarity. The Complainant’s trademark INSTAGRAM is prominent in the disputed domain name The Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent cannot satisfy any of the provisions of paragraph 4(c) of the Policy. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 Respondent has not responded and has not made any claim of rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. According to the Complainant’s enquiries, the disputed domain name featuring the Complainant’s trademark has been used as a pay-per-click platform, which does not constitute a bona fide offering of goods or services. The Respondent’s name “Adana adana” does not resemble the disputed domain name. There is no evidence of any legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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.” The Complainant has produced a screen capture of the website to which the disputed domain name previously resolved. The screen capture is of a single page of simplistic design with a list of what the Respondent acknowledges to be “Related Links”, with the headings “Contact Lindsey Graham”, “Network Security”, “Myphotos”, “Security Guard”, “Firewall Security”, “Job Vacancies Security Guard”, and “Best Enterprise Password Manager 2020”. It may reasonably be concluded that the visitor who clicks on one of these headings will be taken either directly to another website or to a further list of links, and that following a link generates pay-per-click revenue according to the industry model, at least part of which revenue may accrue to the Respondent. Whilst the derivation of pay-per-click revenue may be entirely legitimate, and is widely employed in order to defray the operating costs of a website, or to make a profit, it is not legitimate if the means of attracting visitors is the appropriation of another’s trademark, as here. On the evidence, the Respondent is found to have been using the disputed domain name in order to attract Internet users by confusion with the Complainant’s trademark for commercial gain, within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant’s trademark is an invented word and in all the circumstances it is implausible that the Respondent was unaware of it at the time of registration of the disputed domain name. On the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. The use of a privacy service may be entirely legitimate, but the use of one in order to avoid or delay the service of a Complaint may be a compounding factor in bad faith, and also futile. As expressed by the Hon. Sir Ian Barker QC in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703, “If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”. In the present circumstance the Respondent has used a privacy service in combination with the provision of self-evidently false registration details, thus: “Registrant Name: Adana adana Registrant Organization: adana Registrant Street: adana Registrant Street (second line): adana Registrant City: adana Registrant State/Province: adana.” Inescapably the Respondent has attempted to avoid service of the Complaint, a factor found to compound the finding of registration and use of the disputed domain name 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 Dr. Clive N.A. Trotman
pay-per-click advertisement links that are presumably of commercial benefit to the Respondent or another entity and has done so in reliance upon user confusion with the Complainant’s trademark and reputation.
Sole Panelist
Date: January 15, 2021
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