The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Mustafa Oruc, Portugal. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 12, 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 March 15, 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 19, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2021. The Center appointed Peter Wild as the sole panelist in this matter on May 3, 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, presently being ranked among the most visited websites in the world. The Complainant is the owner of a wide portfolio of trademarks, amongst others, of the trademark INSTAGRAM registered under United States Reg. No. 4146057, on May 22, 2012, and European Union Trade Mark No. 014493886 INSTAGRAM, registered on December 24, 2015. The Disputed Domain Name was registered on May 1, 2020, and at the time of filing, the Disputed Domain Name was not being used in connection with active webpages. 5. Parties’ Contentions A. Complainant The Complainant asserts to be one of the world’s leading providers of online social networking services and applications, actively promoting and using its INSTAGRAM trademark throughout the world. The Disputed Domain Name is, according to the Complainant, confusingly similar to the Complainant’s trademark, creating a likelihood of confusion given the reproduction of its trademark, not adding any distinctiveness thereto by the addition of the descriptive term “customerservice”. Moreover, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the INSTAGRAM trademark. There is evidence that the Disputed Domain Name has been used to conduct phishing activities targeting the Complainant’s users in relation to copyright issues. The Disputed Domain Name was, on July 23, 2020, resolving to a log-in website impersonating the Complainant, inviting Internet users to remove copyright infringements related to their account by providing their username. It is most likely that Instagram users were then asked to provide their confidential passwords, email address, or telephone number. The Complainant’s figurative trade mark was also featured on the top of the website, which are all clear signs of a phishing attack on the Complainant’s customers. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy given that the there is evidence that the Disputed Domain Name has been used for phishing or other fraudulent activities and/or in connection with webpages depicting the Complainant’s trademarks. The Complainant also claims that the Respondent is presently passively holding the Disputed Domain Name and cannot credibly claim to be commonly known by the Disputed Domain Name, or a name corresponding to the Disputed Domain Name. As to the registration of the Disputed Domain Name in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the Disputed Domain Name considering that it has acquired considerable goodwill and renown worldwide. Further, the Respondent’s intent to target the Complainant can easily be inferred from the contents of the website at the Disputed Domain Name, which explicitly references the Complainant and reproduces its trademarks. The Complainant further submits that the Respondent has used Disputed Domain Name in connection with fraudulent schemes to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established its rights in the INSTAGRAM trademark. The Panel sees that the Disputed Domain Name reproduces the Complainant’s trademark in its entirety. The addition of the term “customerservice” does not avoid a finding of confusing similarity under the Policy as the INSTAGRAM mark remains clearly recognizable in the Disputed Domain Name. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel concludes that the Disputed Domain Name is highly confusingly similar to the Complainant’s established trademark. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. There is no reason to believe that the Respondent’s name somehow corresponds with the Disputed Domain Name and the Respondent does not appear to have any trademark rights associated with the term “instagramcustomerservice”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1596. The Respondent is not identified in the WhoIs database as “instagramcustomerservice”. Previous UDRP panels have held that a respondent was not commonly known by a disputed domain name, for example, if not even the WhoIs information was similar to the disputed domain name. There is no evidence in the case file showing that the Respondent may be commonly known as “instagramcustomerservice”. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that the Respondent is not commonly known by the Disputed Domain Name. According to the Complainant, the Respondent is not affiliated with nor authorized by the Complainant in any way to use the trademark and there is no other plausible reason for registration of the Disputed Domain Name than to take advantage of the goodwill and reputation associated with the trademark INSTAGRAM. Furthermore, the Disputed Domain Name did at one time point to an active page which indicates that the Respondent is aware of the Complainant’s business, as it uses and refers to the Complainant’s trademarks. In addition, there is evidence that the Respondent’s use of the Disputed Domain Name to impersonate the Complainant and to conduct phishing activities and/or in connection with webpages depicting the Complainant’s trademark clearly cannot be considered a bona fide offering of goods or services. The Respondent did not file any claims or evidence which would support his/her rights. Based on these facts, the Panel holds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Therefore the Panel decides that the second condition of the Policy is met. C. Registered and Used in Bad Faith The Complainant’s trademark INSTAGRAM has been found to be well-known by previous UDRP panels, see Instagram, LLC v. Azat Oruc and Azat Mordag,WIPO Case No. D2020-1477. Given the distinctiveness of the Complainant’s trademark and reputation at the time of the registration of the Disputed Domain Name, it is reasonable to infer that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant’s trademarks, constituting opportunistic bad faith. The Panel finds it hard to see any other explanation than the Respondent knew the Complainant’s well-known trademark, especially as the website under the Disputed Domain Name at least at one point showed the Complainant’s trademarks. See Ferrari S.p.A. v. American Entertainment Group, Inc.WIPO Case No. D2004-0673 and Revlon Consumer Products Corporation v. Terry Baumer,WIPO Case No. D2011-1051. Furthermore, the Disputed Domain Name was used to point to fraudulent phishing website. The fact that the Disputed Domain Name does not currently resolve to an active website does not prevent a finding of bad faith in these circumstances. The Respondent has not shown to own any trademark or any similar marks or names. The Respondent’s lack of rights in the Disputed Domain Name at issue is a further indication of bad faith in registering and using it. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have “no connection” to that product or service, “opportunistic bad faith” is established. See LACER, S.A. v. Constanti Gomez Marzo,WIPO Case No. D2001-0177. Finally, the Respondent bears the same surname and is apparently located in the same country as a respondent in Instagram, LLC v. Azat Oruc and Azat Mordag, supra, where the Panel decided to transfer the domain names For these reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) 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 Peter Wild
Sole Panelist
Date: May 12, 2021
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