The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Pavel Hlinisty, Belarus. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, 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 January 14, 2021 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 January 15, 2021. 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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. Apart from the emails received from the Respondent, no formal Response was submitted. Accordingly, the Center notified Commencement of Panel Appointment Process on February 15, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on February 25, 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 is an online photo and video-sharing social networking application. Since its launch in 2010, it became a fast growing photo/video sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website, available at “www.instagram.com”, is ranked the 30th most visited website in the world, according to web information company Alexa. Currently, the social network has about 1 billion active users. The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including, for instance the United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012. The disputed domain name was registered on June 18, 2020, and resolves to a parking webpage offering it for sale. The Complainant sent a cease and desist letter to the Respondent, however no reaction by the Respondent followed. 5. Parties’ Contentions A. Complainant The disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporate the INSTAGRAM trademark in its entirety. The applicable generic Top-Level Domain (“gTLD”) “.pro” may be disregarded for the purposes of assessment under the first element, as it is viewed as standard registration requirement. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not been using the disputed domain name in connection with any bona fide offering of goods or services. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its trademark, in a domain name or otherwise. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent could not credibly argue that he did not have knowledge of the Complainant and its trademark when registering the disputed domain name in February 2020, by which time Complainant had amassed some 1 billion active Internet users. The disputed domain name is listed for sale and it is clear that the Respondent registered it primarily for the purpose of selling it, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs in bad faith. The Respondent failed to reply to the Complainant’s cease-and-desist letter. The Respondent’s use of a privacy service to conceal its identity with regard to the disputed domain name further supports an inference of bad faith on the part of the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. In its informal emails the Respondent suggested to sell and then to drop the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLDs “.pro” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case, the disputed domain name incorporates the entirety of the Complainant’s trademark. Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, and no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). Noting the high risk of implied affiliation between the disputed domain name and the identical well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,WIPO Case No. D2019-2897). Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith. According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard, the Panel finds that at least the first of the above scenarios apply to the present case confirming the Respondent’s bad faith. The Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0 , the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain name in bad faith. Considering the above, the Panel finds that both disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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 Taras Kyslyy
Sole Panelist
Date: February 26, 2021
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