The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC / fbhnjm gthyuj, tghyuj, United States of America. 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 24, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2021, the Registrar transmitted by email to the Center its verification 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 March 1, 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 2, 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 William Towns as the sole panelist in this matter on May 2, 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 widely known for its highly successful Instagram online photo and video sharing social networking application. The Complainant launched the Instagram application in 2010, and due to the Instagram application’s popularity and growth it now hosts over one billion monthly active accounts worldwide. According to Alexa, the Complainant’s “www.instagram.com” website is ranked as the 27th most visited website in the world. The Complainant consistently has placed among the “top” apps for mobile devices, receiving numerous awards including “App of the Year” from Apple Inc. in 2011. The Complainant was ranked 19th in Interbrand’s Best Global Brands in 2020. The Complainant owns trademark registrations for INSTAGRAM in multiple jurisdictions, including: - United States Registration No. 4146057, filed on September 19, 2011, and registered on May 22, 2012 (first use in commerce October 6, 2010); - European Union Trademark Registration No. 014493886, filed on August 20, 2015, and registered on December 24, 2015; -International Trademark Registration No. 1129314, date of registration March 15, 2012 (designating multiple contracting parties);1 The Complainant also is the registrant of a numerous domain names reflecting the INSTAGRAM mark. The Complainant submits that the disputed domain name The Complainant draws attention to previous UDRP decisions describing the substitution of similar-appearing characters, citing Instagram, LLC v. Hdr Akansel,WIPO Case No. D2019-1158 ( The Complainant maintains that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark, and contends that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, the disputed domain name does not resolve to an active website, and the Complainant submits there is no evidence that the Respondent prior to any notice of the dispute had either used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant asserts that the Respondent’s non-use of the disputed domain name does not constitute bona fide use, citing Instagram,LLC v. Zafer Demir, Yok,WIPO Case No. D2019-1072 ( The Complainant maintains that the Respondent registered and has used the disputed domain name in bad faith. The Complainant asserts that the Respondent cannot credibly contend to have had no knowledge of the Complainant and its INSTAGRAM mark when registering the disputed domain name. The Complainant emphasizes that the INSTAGRAM mark is inherently distinctive and well known, and continuously in use since as early as 2010. According to the Complainant, the fame of its INSTAGRAM mark is evidenced by the sheer number of cybersquatters that have sought to exploit the consumer recognition and goodwill attached to the Complainant’s mark. The Complainant observes that UDRP panels recognizing the strength and renown of the INSTAGRAM mark have ordered transfers of such disputed domain names to the Complainant, citing Instagram, LLC v. Saddam Hussain, supra. The Complainant maintains that the term “instagram” is highly distinctive and exclusively associated with the Complainant, and that the Respondent’s intent to target the Complainant and its INSTAGRAM mark carries with it a risk of implied affiliation with the Complainant. The Complainant submits that no plausible good faith use of the disputed domain name could be made by the Respondent without misleading consumers as to the source or affiliation of the disputed domain name. The Complainant reiterates that the disputed domain name is not being actively used by the Respondent, submits that the Respondent’s passive holding of the disputed domain name constitutes abuse and as such does not preclude a finding of bad faith, citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant emphasizes that the Respondent otherwise might use the disputed domain name with misleading hyperlinks or email addresses in an attempt to deceive Internet users in to disclosing personal and confidential information. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this instance, the Complainant’s INSTAGRAM mark is clearly recognizable in the disputed domain name.3 The first letter of the disputed domain name is a lower case “L”, which in the context of the disputed domain name is virtually identical the capital letter “i”. The presence of the lower case “L” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. See, e.g., LLC v. Temp name Temp Last Name, Temp Organization,WIPO Case No. D2019-0109. See also Instagram, LLC v. A S,WIPO Case No. D2020-1327 ( Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s INSTAGRAM mark. The Respondent notwithstanding registered the disputed domain name, which incorporates the Complainant’s INSTAGRAM in its entirety. As previously noted, the disputed domain name does not resolve to any active website and has been passively held by the Respondent. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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, as previously discussed, has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of and had the Complainant’s well-known INSTAGRAM mark in mind when registering the disputed domain name. The Respondent has passively held the disputed domain name and has brought forward no credible evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. See WIPO Overview 3.0, section 2.2 and cases cited therein. Nor has the Respondent brought forth any claim to be making a legitimate noncommercial or fair use of the disputed domain name. A respondent’s use of a domain name cannot be considered “fair” if it falsely suggests affiliation with the trademark owner, and UDRP panels generally have found that a domain name appropriating a complainant’s trademark plus an additional term carries a risk of implied affiliation if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359; Project Management Institute v. CMN.com,WIPO Case No. D2013-2035. In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and had the Complainant’s distinctive and well-known INSTAGRAM mark in mind when registering the disputed domain name. The Panel considers that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant’s trademark rights. The Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. The Panel finds such circumstances to be present in this case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 R. Towns 1 Grants of protection: Australia (AU); Switzerland (CH), European Union (EU); Israel (IL); Japan (JP); Korea (KR); Norway (NO); Singapore (SG); Turkey (TR). 2 See WIPO Overview 3.0 , section 1.7. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. 4 Id. 5 See WIPO Overview 3.0, section 1.11.
According to the Registrar’s WhoIs records, the Respondent is the registrant of the disputed domain name
Sole Panelist
Date: May 16, 2021
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