The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Private WhoIs, Global Domain Privacy Services Inc, Panama / Aleksandr Lyahevich, Private Person, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 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 February 19, 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 February 24, 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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021. The Center appointed Assen Alexiev as the sole panelist in this matter on April 29, 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 a world-renowned online photo- and video-sharing and editing software and social network, with more than 1 billion monthly active accounts worldwide. It was founded in 2010 and acquired by Facebook, Inc. in 2012. According to the applications information company App Annie, the Complainant’s mobile phone application is currently the third most downloaded application for iOS phones worldwide, The Complainant is the owner of the following trademark registrations for the sign “INSTA” (the “INSTA trademark”): − the United States trademark INSTA with registration No. 5061916, registered on October 18, 2016 for goods in International Class 9; and The Complainant is also the owner of the following trademark registrations for the sign “INSTAGRAM” (the “INSTAGRAM trademark”): − the United States trademark INSTAGRAM with registration No. 4146057, registered on May 22, 2012 for goods in International Class 9; The Complainant is also the owner of the domain names The disputed domain name was registered on March 29, 2020. At the time of filing of the Complaint, it resolved to a website advertised as “Instagram explorer and viewer”. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the INSTA trademark, because the combination “instognita” is a reference to the INSTA trademark and the term “incognito”, and the letters “inst” as the leading element of the disputed domain name make the INSTA trademark sufficiently recognizable in the disputed domain name. The Complainant adds that the content of the website associated with the disputed domain name shows that the Respondent has sought to target the Complainant’s INSTA and INSTAGRAM trademarks through the disputed domain name. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent has not been authorized by the Complainant to use the INSTA and INSTAGRAM trademarks and has no rights in them, and is not commonly known by the disputed domain name. The Complainant further submits that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, as the associated website purports to offer a tool for viewing and exploring Instagram without the need for an Instagram account. This website currently has only limited functionality, as the links on it and the search function do not function. Nevertheless, such tool would be in breach of the Complainant’s Terms of Use and of Facebook’s Developer Policies, as the creation of a tool that facilitates the unlimited viewing and downloading of content from the Instagram platform without first logging into an account goes beyond the limits that Instagram has placed on the functionality of its own product, and places the privacy and security of Instagram users at risk, in that content scraped from the Instagram platform may be stored and later used for unauthorized purposes by third parties. Under the Instagram Terms of Use, Instagram users are not required to disclose their identity on Instagram, but access to content on Instagram is conditional upon the provision of accurate registration information, and it is prohibited to impersonate another person, to create an account for someone else, to interfere with or impair the intended operation of the Instagram service, and to attempt to create accounts or access or collect information in unauthorized ways, including creating accounts or collecting information in an automated way without an express permission by Instagram. The Facebook Developer Policies, which apply to Instagram, require developers to respect the way Instagram looks and functions and the limits placed on its product functionality. The Complainant also notes that the Respondent’s website prominently uses the INSTAGRAM trademark and the Complainant’s figurative camera trademark as a favicon, and includes no contact information and no disclaimer that the website is not affiliated with the Complainant. This creates a misleading impression that the Complainant has approved the Respondent’s use of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The INSTA and INSTAGRAM trademarks are inherently distinctive and have considerable reputation and goodwill worldwide as a result of their continuous and extensive used since 2010 in connection with the Complainant’s online photo-sharing social network. In light of this, the Respondent must have had knowledge of the Complainant and of the INSTA and INSTAGRAM trademarks when registering the disputed domain name in March 2020, by which time Instagram had amassed over 1 billion monthly active users. The Respondent’s intent to target the Complainant when registering the disputed domain name is also evident from the contents of the Respondent’s website, which make explicit reference to Instagram and make prominent use of the Complainant’s trademarks. The Complainant further notes that the Respondent has not displayed any bona fide intent in relation to the disputed domain name. Rather, the Respondent has taken steps to set up a website that purports to provide an Instagram viewing tool, which if functional would violate the Instagram Terms of Use and the Facebook Developer Policies. According to the Complainant, this shows that the Respondent, having no relationship with the Complainant or authorization to use its trademarks, registered the disputed domain name with a view to attracting Internet users to its website resulting from a perceived association between the disputed domain name, the Respondent’s website, and the Complainant’s name and trademarks. The Complainant further submits that the disputed domain name resolves to a landing page that purports to offer a tool for the unauthorized viewing and downloading of content on Instagram, circumventing the requirement of creating an account to access the Instagram platform, which may compromise the privacy and safety of Instagram users, given that such content may be stored and later used for unauthorized purposes by third parties. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the INSTA trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name. The relevant part of the disputed domain name is therefore the sequence “instognita”, which incorporates the first four letters of the INSTA trademark in combination with the letters “ognita”. This sequence indeed appears as a combination of the INSTA trademark with the word “incognito”, and the INSTA trademark is sufficiently recognizable in the sequence. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. In the broader case context, it should also be noted that the disputed domain name, viewed as a combination of the INSTA trademark with the word “incognito”, can be regarded as descriptive of the services advertised on the Respondent’s website for an “incognito” access to the content on the Complainant social platform, thus trading off the Complainant’s reputation. This further supports a finding of confusing similarity between the disputed domain name and the INSTA trademark. Moreover, the disputed domain name resolves to a website advertised as “Instagram explorer and viewer”. This is evidence that the Respondent targeted the Complainant and the INSTA trademark and affirms the confusing similarity. See sections 1.7 and 1.15 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the INSTA trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the INSTA trademark, is not known by the disputed domain name and is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the Respondent has used the disputed domain name for a website offering Internet users a tool for viewing and exploring Instagram without the need for an Instagram account, the operation of which would be in breach of the Complainant’s Terms of Use and of the Facebook Developer Policies, and may put the privacy and security of Instagram users at risk, in that content scraped from the Instagram platform may be stored and later used for unauthorized purposes by third parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response. It has not provided a plausible explanation for the registration and use of the disputed domain name, and has not denied the contentions of the Complainant in this proceeding. As discussed in section 6.A above, the disputed domain name can be regarded as a combination of the INSTA trademark and the word “incognito”, which is descriptive of the service offered on the associated website to allow access to the Instagram platform without an Instagram account. As pointed out by the Complainant, the operation of such service may put the privacy and security of Instagram users at risk. The website features the INSTAGRAM trademark and contains no disclaimer for the lack of affiliation to the Complainant and no contact details for the provider of the website. In view of the above and in the lack of any plausible explanation to the contrary, it appears more likely to the Panel that the Respondent has registered the disputed domain name targeting the Complainant’s INSTA trademark and has used it in an attempt to attract Internet users to its website offering illegitimate services. In the Panel’s view, such conduct cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances 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 website or other online 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.” As discussed above, the disputed domain name can be regarded as a combination of the INSTA trademark and the word “incognito”, which is descriptive of the service offered on the associated website to allow access to the Instagram platform without an Instagram account. The Respondent does not deny that it has linked it to a website that has offered such service, which may put the privacy and security of Instagram users at risk, and has not given any plausible explanation why its activities should be regarded as legitimate. At the same time, the evidence in the case file shows that the Respondent’s website prominently uses the INSTAGRAM trademark and includes no contact information and no disclaimer that the website is not affiliated with the Complainant. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the INSTA trademark in an attempt to attract traffic to the disputed domain name and to offer illegitimate services to Internet users, misleading them that the disputed domain name and the associated website are authorized by the Complainant. This satisfies the Panel that the disputed domain name has been registered and 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 Assen Alexiev
− the European Union trademark INSTA with registration No. 014810535, registered on May 23, 2018 for goods in International Class 9.
− the European Union trademark INSTAGRAM with registration No. 014493886, registered on December 24, 2015 for goods and services in International Classes 25, 35, 38, 41 and 45; and
− International trademark INSTAGRAM with registration No. 1129314, registered on March 15, 2012 for goods and services in International Classes 9 and 42.
Sole Panelist
Date: May 14, 2021
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