The Complainant is Instagram, LLC and Facebook Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domains By Proxy, LLC, United States / vaibhav rajput, careernjobs group, India. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 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 April 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2021. The Center appointed Knud Wallberg as the sole panelist in this matter on June 1, 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 and Facebook, Inc, in the following referred to as the Complainant, provides online social networking services and has rapidly developed considerable renown and goodwill worldwide, including in India where the Respondent is based. Its websites at “www.facebook.com” and “www.instagram.com” are ranked respectively as the 7th and 25th most visited websites in the world as well as 5th and 14th in India according to information company Alexa. Available on mobile devices, Facebook and Instagram are both among the top five applications on mobile devices in the world and in India, as per App Annie's Top Apps Rankings in 2021. The Complainant owns numerous trademark registrations to the terms INSTAGRAM, INSTA and FB in many jurisdictions throughout the world, including in India. The registrations include but are not limited to; European Union Trade mark No. 014810535, INSTA, registered on May 23, 2018, for goods in class 9; European Union Trade mark No. 008981383, FB, registered on August 23, 2021, for services in class 45, The Complainant is also the registrant of numerous domain names consisting of the trademarks INSTAGRAM and FB, such as The disputed domain name The disputed domain name The disputed domain name The disputed domain name <9instadp.com> was registered on November 21, 2018, and resolves to a website purportedly allowing Internet users to see Instagram profile pictures in full size by pasting profile links in the input box displayed on the website. The website also displays a similar and contains, at the top of the screen, two links entitled “Insta Downloader” and “Facebook” respectively redirecting to the websites associated with the domain names The disputed domain name The disputed domain name The Complainant submits that the disputed domain names are confusingly similar to the trademarks in which it has rights. The disputed domain names incorporate the Complainant’s INSTAGRAM, INSTA or FB trademark in its entirety with the addition of dictionary terms, such as “download(er)”, “videos”, “reels” and “stuff”. In addition to the Complainant’s INSTA trademark, the disputed domain name <9instadp.com> also contains the letters “dp”, which may stand for “daily picture/profile” given the nature of the associated website as described above, and the number “9”. The disputed domain name The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its INSTAGRAM, INSTA or FB trademark, in a domain name or otherwise. The Complainant further asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights and legitimate interests in the disputed domain names. The Respondent can thus not assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. In addition, the Respondent cannot conceivably claim that he is commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy, since the Respondent's name bears no resemblance to the disputed domain names. The Complainant finally submits that the disputed domain names were registered and are being used in bad faith. The Complainant's trademarks are highly distinctive and well known throughout the world and have rapidly acquired considerable goodwill and renown worldwide, including in India where the Respondent is based. In view of this and of the registration dates of the Complainant’s trademarks, it would be inconceivable that the Respondent did not have knowledge of these trademarks at the time of registration of the disputed domain names. Furthermore, the Respondent’s subsequent use of most of the disputed domain names to point to websites providing services targeting Instagram and Facebook leaves no doubt as to his knowledge of the Complainant at the time of registration of the disputed domain names, as well as the Respondent’s bad faith intent. The Complainant further submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering domain names targeting the Complainant’s trademarks for the purpose of preventing the trademark owners from reflecting their trademarks in corresponding domain names. It is submitted that the Respondent is using or previously used the six disputed domain names to intentionally attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the websites, in accordance with paragraph 4(b)(iv) of the Policy. The disputed domain names are thus being or were previously used to redirect Internet users either to websites containing PPC links or monetized videos or to a parking page with sponsored links. The display of a disclaimer on some of the associated websites shall not prevent a finding of bad faith, given the overall circumstances indicating the Respondent’s bad faith intent to target the Complainant and to violate its terms and policies, just as the fact two of the disputed domain names no longer points to active website cannot cure the Respondent’s bad faith. The Complainant request that the Complaint shall be consolidated. The Complaint submit that since Instagram LLC is a wholly owned subsidiary of Facebook Inc, they have a sufficient common legal interest in the trademarks reproduced in the disputed domain names to file a joint Complaint. In addition, the Complainant has been the target of common conduct by the Respondent, consisting of a pattern of reproducing their respective trademarks in a domain name, which clearly affects their individual rights and interests in a similar fashion. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Consolidation Before addressing the three elements of the Policy, the Panel must first address a procedural issue, namely whether to accept in the present procedure that the Complaint, may be consolidated. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether Based on the fact of the case as described above in section 5 above, the Panel finds that the Complainant has established a prima facie case that the Complaint can be consolidated, and since the registrar confirmed that the Respondent was the same for the six domain names, the Panel finds that it is appropriate to consolidate the Complaint. 6.2. The substantive matter of the Complaint According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain names; and (iii) that the domain names have been registered and are being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The disputed domain names The disputed domain names The disputed domain name The disputed domain name Based on the above and on the fact that the generic Top-Level Domain (“gTLD”) “.com” and “.net” are standard registration requirement and as such is generally disregarded under confusing similarity test. The Panel finds that the disputed domain names are all confusingly similar (in the sense of the Policy) to the Complainant’s registered trademarks. The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to all the disputed domain names. B. Rights or Legitimate Interests It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings. Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the holder has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain names; or Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith. Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademarks INSTAGRAM and FB but also the extent of use of the INSTA trademark being a well-known, short version of the INSTAGRAM trademark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain names he chose could attract Internet users in a manner that is likely to create confusion for such users. The Panel therefore finds that the disputed domain names were registered in bad faith. Given the above described prior and present use of the disputed domain names it is equally evident that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the various websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these websites, and that the number of disputed domain names clearly shows that the Respondent is engaged in a pattern of bad faith registration and use. Under such circumstances the fact that some of the websites includes a disclaimer does not dispel a finding of bad faith. Reference is made to the second paragraph of section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which reads “On the other hand, 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. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused”. The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled for all the disputed domain names in this case. 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 names, Knud Wallberg
Indian Trade mark No. 3042394, INSTAGRAM, registered on August 27, 2015, for goods in class 9;
International Trade mark No. 1129314, INSTAGRAM, registered on March 15, 2012, for goods and services in class 9 and 42;
United States Trade mark No. 5061916, INSTA, registered on October 18, 2016, for goods in class 9; and
United States Trade mark No. 4659777, FB, registered on December 23, 2014, for services in class 35.
(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and
(ii) it would be equitable and procedurally efficient to permit the consolidation.
(ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Sole Panelist
Date: June 22, 2021
Full & Egal Universal Law Academy