The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States / Ahmad Butto, Israel. 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 12, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 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 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 18, 2021. On March 15, 2021, the Respondent sent an email communication to the Center. 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 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2021. The Respondent did not submit a formal response. The Center notified the Parties that it will proceed to Panel Appointment on April 19, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on April 27, 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 United States company that operates a well-known photo and video sharing social networking application. The Complainant’s Instagram application was launched in 2010 and by 2017 had 800 million monthly active users. The Complainant’s website at “www.instagram.com” is currently ranked the 26th most visited website in the world. The Complainant is the owner of trade mark registrations in various jurisdictions (including the European Union and United States) for marks consisting of the word “Instagram” (the “INSTAGRAM Mark”) including United States registration No. 4146057 registered on May 22, 2012. The Domain Name was registered on January 5, 2021 and is presently inactive. Prior to the commencement of the proceedings the Domain Name redirected to a website (the “Respondent’s Website”) that offered sponsored listings (often referred to as pay-per-click advertisements) linked to a variety of third-party websites. The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is confusingly similar to the Complainant’s INSTAGRAM Mark; The Complainant is the owner of the INSTAGRAM Mark, being the owner of trade marks registered in various jurisdictions for the INSTAGRAM Mark. The Domain Name, translated as There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the INSTAGRAM Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name had, prior to the commencement of the proceedings, resolved to a page with links to advertisements which does not provide the Respondent with rights or legitimate interests. The Respondent has registered and uses the Domain Name in bad faith. Given the fame of the INSTAGRAM Mark and the nature of the Domain Name, being almost identical to the INSTAGRAM Mark, there are no plausible circumstances under which the Respondent could legitimately use the Domain Name other than in bad faith. In such circumstances, the Respondent’s use of the Domain Name for a pay-per-click website amounts to use of the Domain Name in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On March 15, 2021, the Respondent sent an email to the Center stating “I did not understand this message” 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the INSTAGRAM Mark, having registrations for the INSTAGRAM Mark as a trade mark in the United States and other jurisdictions. Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the INSTAGRAM Mark since it wholly incorporates the INSTAGRAM Mark, other than replacing the “i” with a “l” and the second “a” with a “á” which creates a minor distinction that would be easy for an Internet user to overlook. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable 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; or The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the INSTAGRAM Mark or a mark similar to the INSTAGRAM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be a parking page with pay-per-click links unrelated to the Complainant’s business does not amount to use for a bona fide offering of goods and services. The Panel notes the statements in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) on the question of whether “parked” pages comprising pay-per-click links support respondent rights or legitimate interests. The WIPO Overview 3.0 notes that: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. […] Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.” In the present case, the Domain Name has no inherent meaning and is confusingly similar to the Complainant’s well-known INSTAGRAM Mark and hence the Respondent’s use of the confusingly similar Domain Name to host a parking page with pay-per-click links does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the Domain Name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the INSTAGRAM Mark at the time the Respondent acquired the Domain Name. The INSTAGRAM Mark consists of a coined word that as of the date of registration, was used for a social networking service with over 1 billion monthly active users. The Respondent has provided no explanation, and none is immediately obvious, as to why an entity would register a domain name containing minor misspellings of the INSTAGRAM Mark and redirect it to website containing pay-per-click links unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its INSTAGRAM Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith. The Respondent’s Website offered what appeared to be pay-per-click links for which the Respondent undoubtedly received some commercial gain. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the INSTAGRAM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such, the Panel finds that the Domain Name is being used in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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 Domain Name, Nicholas Smith
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 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 the Respondent’s website or location. (Policy, paragraph 4(b)).
Sole Panelist
Date: April 29, 2021
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