The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Patrick Orleck, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 December 9, 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 December 11, 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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent sent an email communication to the Center on December 17, 2020, offering settlement. The Complainant did not request suspension of the proceedings. Accordingly, on January 12, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed William F. Hamilton as the sole panelist in this matter on January 26, 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 operated a world-renowned online photo and video sharing social networking application with more than 1 billion monthly active users. The Complainant launched “Instagram Reels”, a video-music feature, in various countries in November 2019. The Complainant owns numerous trademark registrations for the mark INSTAGRAM (the “Mark”) in many jurisdictions around the world, including: - United States Trademark No. 4146057 registered on May 22, 2012, The disputed domain name was registered on August 8, 2020 and it resolves to a parking website offering links to various services and products not associated with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed of the Mark plus the mere addition of the dictionary words “reels” and “on”. Moreover, the Complainant notes that word “reels” is the name of a popular service offered by the Complainant. The Complainant asserts that the Complainant never authorized the Respondent to use the Mark, that the Respondent is not known by the Mark, and that the Respondent has never engaged in any bona fide commercial activity in connection with the Mark. The Complainant also asserts the Respondent has registered and used the disputed domain name in bad faith to lure unsuspecting Internet users to the Respondent’s website for commercial gain. B. Respondent The Respondent did not formally reply to the Complainant’s contentions but rather send an email essentially offering to transfer the disputed domain name to the Complainant. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name is composed merely by the addition of the composite expression “reelson” to the Mark. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusing similarity for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Instagram, LLC v. Wu Hai Tao (吴海涛),WIPO Case No. D2020-2040 (dictionary word ‘reels’ not capable of dispelling confusing similarity.) The gTLD, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. The Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Respondent has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent did not formally respond to the Complaint except to offer in an email to abandon the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds the disputed domain name was registered and used in bad faith. The Panel finds that the Respondent intentionally attempted to falsely lure and attract Internet users to the Respondent’s website for commercial gain. The confusingly similar disputed domain name resolves to a parking website offering links to various products and services. Given the Complainant’s distinctive and well-known Mark, not to mention its popular “Reels” service, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. It is abundantly clear that the Respondent registered the disputed domain name in bad faith and used the disputed domain name to trade on the Complainant’s Mark and “Reels” feature offering. The Complainant has met its burden 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 name William F. Hamilton
- European Union Trade Mark No. 014493886 registered on December 24, 2015, and
- International Trademark No. 1129314 registered on March 15, 2012.
Sole Panelist
Date: February 9, 2021
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