The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Alexis Kane, Turkey. 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 25, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 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 April 6, 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 April 8, 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 April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021. The Center appointed Mihaela Maravela as the sole panelist in this matter on May 7, 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 contends that it is a world-renowned online photo- and video-sharing social-networking application. Since its launch in 2010, it has rapidly acquired and developed considerable goodwill and renown worldwide. After being acquired by Facebook, Inc. in 2012, it became one of the world’s fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website available at “www.instagram.com” is ranked the 26th most visited website in the world, according to web information company Alexa. The Complainant is the exclusive owner of a number of registered trademarks consisting of the word INSTAGRAM in various jurisdictions throughout the world, including the following: - the International Trademark for INSTAGRAM with registration number 1129314, registered on March 15, 2012; The Complainant is the owner of numerous domain names consisting of the trademark INSTAGRAM, for instance, The disputed domain name was registered on December 25, 2020. According to the unrebutted evidence produced by the Complainant, the disputed domain name resolved at the date of the Complaint to a Google warning page stating “Deceptive site ahead”, containing, among others, a hyperlink stating: “if you understand the risks to your security, visit this unsafe site”. At the time of the decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has established rights in the trademark INSTAGRAM, as it owns numerous trademark registrations for INSTAGRAM in jurisdictions throughout the world, and that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trademark. The disputed domain name incorporates the entirety of the Complainant’s INSTAGRAM trademark, together with the descriptive terms “help” and “form”. Such addition only reinforces the confusing similarity with the Complainant’s INSTAGRAM trademark as the Complainant provides its official support service through the Instagram Help Centre available at “https://help.instagram.com/”. Further, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. The Respondent is not making a bona fide use of the disputed domain name as it does not resolve to an active webpage. In addition, there is a “deceptive website” warning before entering the website to which the disputed domain name resolves, and such use cannot be considered as use in connection with a bona fide offering of goods or services. The Respondent cannot legitimately claim to be commonly known by the disputed domain name and it is not making any legitimate noncommercial or fair use of the disputed domain name. In addition, with regard to the third element, the Complainant argues that given the continuous and extensive use since at least 2010, the Complainant’s INSTAGRAM trademark acquired considerable goodwill and reputation. The term “Instagram” is highly distinctive and is exclusively associated with the Complainant. The Complainant concludes that it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s INSTAGRAM trademark at the time of registration of the disputed domain name in 2020, by which time Instagram had amassed over 1 billion monthly active users. In what concerns the use of the disputed domain name, the Complainant shows that the disputed domain name does not resolve, and argues that such non-use of the disputed domain name would not prevent a finding of bad faith use under the doctrine of passive holding, given that: (i) the Complainant’s INSTAGRAM trademark is well known internationally, (ii) despite the Complainant’s efforts to contact the Respondent, the Respondent has not come forward with any response or evidence of bona fide intent in relation to the disputed domain name, (iii) the Respondent’s details are concealed in the publicly available WhoIs records, (iv) in light of the nature of the disputed domain name, it carries with it a high risk of implied affiliation with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the INSTAGRAM trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here the disputed domain name wholly incorporates the Complainant’s INSTAGRAM trademark in addition to the words “help”, “form” and hyphens between each word. This addition does not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. It is well accepted by previous UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.” In the present case, the Complainant has established a prima facie case that it holds rights over the trademark INSTAGRAM and claims that the Respondent has no rights or legitimate interests to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name. By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839. Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. According to the unrebutted assertions of the Complainant, its INSTAGRAM trademark was widely used in commerce well before the registration of the disputed domain name in December 2020. The disputed domain name is confusingly similar with the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why he registered the disputed domain name. As regards the use of the disputed domain name, the fact that the website at which the disputed domain name resolves is inactive does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T,WIPO Case No. D2009-0938; Allianz SE v. Everton Araujo,WIPO Case No. D2014-0431). “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (see section 3.3 of the WIPO Overview 3.0). Based on the evidence in the case file, the mentioned circumstances are present in the current proceeding. As such, the Complainant’s trademark INSTAGRAM has been extensively used by the Complainant and had significant goodwill and reputation by the time of the registration of the disputed domain name (see, e.g., Instagram, LLC v. zed baskan, Turkeydc,WIPO Case No. D2021-0181). The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s well-known trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The following factors were also considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210; (ii) the Respondent’s lack of response to the cease and desist letter sent by the Complainant. See, e.g. Intesa Sanpaolo S.p.A. v. Ekkert Ida,WIPO Case No. D2018-2207; (iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy. The Respondent’s bad faith registration and use of the disputed domain name can also be inferred from the warnings on the relevant website, that the disputed domain name resolves to a website that is deceptive, stating that “if you understand the risks to your security, visit this unsafe site” and disclosing that the Internet users might be tricked into doing something dangerous like installing software or revealing personal information (for example passwords, phone numbers, or credit cards). For a similar finding see Instagram, LLC v. Ferhat Kilinc, Bursa,WIPO Case No. D2021-0180; Intesa Sanpaolo S.p.A. v. Kara Turner,WIPO Case No. D2018-0639. In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. 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 Mihaela Maravela
- the European Union Trade Mark for INSTAGRAM with registration number 014493886, registered on December 24, 2015;
- the United States Trademark for INSTAGRAM with registration number 4146057 registered on May 22, 2012.
Sole Panelist
Date: May 21, 2021
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