The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Sergey Petrov, Seychelles. 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 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 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 March 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default May 18, 2021. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 17, 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 Instagram, LLC, the Complainant in the present proceedings, operates a world-renowned photo and video sharing social networking application – Instagram (“Instagram”). The Complainant’s application was launched on October 6, 2010. The Complainant owns numerous INSTAGRAM and GRAM trademark registrations, including: - United States Trademark Registration No. 4146057 for INSTAGRAM, registered on May 22, 2012; The Complainant’s official domain names includes Moreover, the Complainant has developed a strong presence on various social-media platforms, including Facebook, Twitter, and LinkedIn. For instance, Instagram’s official Facebook page has over 59 million Facebook “likes” and over 35 million followers on Twitter. The Domain Name was registered on May 6, 2020. The Domain Name resolves to a website “www.greatfon.com” (the “Website”), which provides a tool for viewing and downloading content on Instagram. It also contains pay-per-click (PPC) links. According to the “About us” section of the Respondent’s Website, “Greatfon.com is an Instagram account analyzer and viewer. Our algorithm gives you the possibility of analyzing your or other person’s Instagram account statistics. It also allows you to see the account rate which shows how much your Instagram account is really popular. Furthermore, you can anonymously explore and monitor your or other person’s Instagram content. With statistics, you are able to explore Instagram profiles, hashtags, posts, followers, stories, locations and much more. You have the option to anonymously download Instagram photos, videos and stories completely for free and in an unlimited amount. (…)”. 5. Parties’ Contentions A. Complainant The Complainant requests that the Domain Name be transferred to the Complainant. First, the Complainant submits that the Domain Name is confusingly similar to the INSTAGRAM and GRAM marks in which the Complainant has rights. Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. Third, the Complainant contends that the Domain Name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A. Identical or Confusingly Similar The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights. The Complainant holds valid INSTAGRAM and GRAM trademark registrations, which predate the registration of the Domain Name. The Domain Name incorporates the Complainant’s GRAM trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). This Panel accepts that the addition of the term “hum” does not prevent the Complainant’s trademark from being recognizable in the Domain Name. UDRP panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8. The gTLD in the Domain Name “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1. Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (a) that it has made 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 prior to the dispute; or (b) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or (c) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. As mentioned above, it results from the evidence in the record that the Complainant’s INSTAGRAM and GRAM trademark registrations predate the Respondent’s registration of the Domain Name. The Complainant has not authorized the Respondent to make use of the INSTAGRAM or GRAM trademarks or to register the Domain Name incorporating these trademarks. Moreover, there is nothing in the record which would prove that the Respondent has made a legitimate noncommercial or fair use of the Domain Name or has an intention to use the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the evidence provided by the Complainant demonstrates that the Respondent uses the Domain Name to provide the Internet users with a tool for viewing and downloading content from Instagram, without the need for an Instagram account. The facilitation of the unrestricted 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. In result, the tool provided at the Respondent’s Website violates the Instagram’s Terms of Use, as well as the Facebook’s Developer Policies, which apply to Instagram. In addition, the Panel accepts that the Website places the privacy and security of Instagram users at risk, as content downloaded from Instagram may be used for unauthorized purposes by third parties. Furthermore, the Website contains PPC links, from which the Respondent derives click-through revenue. Such use of the Domain Name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. Furthermore, the Website displays the Complainant’s distinctive INSTAGRAM mark. At the same time, it does not contain a visible, clear, and sufficiently prominent disclaimer stating that it is not affiliated with the Complainant, nor does it display any functional contact information to identify the Respondent. Such clear and sufficiently prominent disclaimer could in theory lend support to circumstances suggesting the Respondent’s good faith (but this would be negated by its violation of the relevant user terms). However, where the overall circumstances of a case point to the Respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. The panels have held that in such cases the Respondent’s use of a disclaimer could be considered as an admission by the Respondent that users may be confused. See WIPO Overview 3.0, section 3.7. In the present case, the Website contains the disclaimer in small print located at the very the bottom of the Website and partially obscured by advertising. It states that “this product uses the Instagram API but is not endorsed or certified by Instagram. All Instagram™ logos and trademarks displayed on this application are property of Instagram”. In the Panel’s view, such disclaimer cannot be considered visible, clear, and sufficiently prominent. The mere indication that the Website is not endorsed nor affiliated with Instagram does not prove the Respondent’s good faith. Internet users may believe that they are visiting a website affiliated with or endorsed by the Complainant. This further shows that the Respondent’s use of the Domain Name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. There is also nothing in the record which would prove that the Respondent is commonly known by the Domain Name. Thus, he cannot be regarded as having acquired rights or legitimate interests in the Domain Name. Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1. Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. In the present case, the Complainant’s rights in INSTAGRAM and GRAM trademarks predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademarks at the time of registration of the Domain Name. It is primarily supported by the type of service offered at the Website, as well as the content of the disclaimer cited in the section 6.B. above. Also, it has been proven to the Panel’s satisfaction that the Complainant’s INSTAGRAM and GRAM trademarks are well-known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of the services the trademarks identify. As indicated above, the Domain Name is being used in bad faith by the Respondent to offer Internet users a tool for viewing and downloading content from Instagram. By reproducing the Complainant’s GRAM trademark in the Domain Name, as well as including the INSTAGRAM trademark on the Website, the Respondent intends to benefit or profit from the confusion created with Internet users, as it suggests association with the Complainant. In consequence, the Panel finds that the evidence in the record demonstrates that the Respondent registered and uses the Domain Name deliberately in order to take advantage of the Complainant’s reputation and to give credibility to its services. Thus, for the reasons discussed above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s trademarks and that the Complainant has proven that the Respondent’s registration and use of the Domain Name was in bad faith, according to paragraphs 4(b)(iv) and 4(a)(iii) under 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 Domain Name Piotr Nowaczyk
- European Union Trade Mark No. 014493886 for INSTAGRAM, registered on December 24, 2015;
- International Registration No. 1129314 for INSTAGRAM, registered on March 15, 2012;
- European Union Trade Mark No. 015868797 for GRAM, registered on January 12 2017;
- European Union Trade Mark No. 017642729 for GRAM, registered on March, 23 2019.
Sole Panelist
Date: June 24, 2021
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