The Complainants are Instagram, LLC and WhatsApp, LLC, United States of America (the “US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Sergienko Mihail Aleksandrovich, Russian Federation and Novruzov Elshan Sadagatovich, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 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 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On April 21, 2021, the Center sent an email to the Parties both in English and Russian regarding the language of the proceedings. On April 21, 2021, the Complainants confirmed its request that English be the language of the proceedings and relied on respective arguments in the Complaint. The Respondents have not provided any comments regarding the language of the Proceedings. The Center verified that the 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 Respondents of the Complaint, and the proceedings commenced on April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 21, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on June 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 Instagram, LLC is an online photo- and video-sharing social networking application. Since its launch in 2010 it became a fast growing photo/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 25th most visited website in the world, according to web information company Alexa. The Complainant Instagram, LLC owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including the US trademark registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012, and the Russian Federation trademark registration No. 511271, INSTAGRAM, registered on 16 April 2014. The Complainant Instagram, LLC owns numerous trademark registrations for INSTA in many jurisdictions around the world, including the US trademark registration No. 5061916, registered on October 18, 2016. The Complainant WhatsApp, LLC is a provider of a mobile messaging application. Founded in 2009 it allows users across the globe to exchange messages via smartphones. Its main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform. Since its launch in 2009, it has become a fast growing and popular mobile application with over 1 million monthly active users by the end of 2009, and 2 billion in February 2020. The Complainant WhatsApp, LLC’s application is the 4th most downloaded application in the world as per App Annie’s Top Apps Worldwide Rankings in February 2021. The Complainant WhatsApp, LLC owns numerous trademark registrations for WHATSAPP in many jurisdictions around the world, including international registration No. 1085539, registered on May 24, 2011 and designating also the Russian Federation. Both of the Complainants were acquired by Facebook Inc. The disputed domain names were registered during November 2020 on the following dates: <2020-instagram.xyz>, registered on November 16, 2020; The disputed domain names At the time of the Complaint filing and further the disputed domain names do not resolve to any active webpages. 5. Parties’ Contentions A. Complainants The disputed domain names are identical or confusingly similar to the Complainants’ trademarks. The disputed domain names incorporate the INSTAGRAM / INSTA / WHATSAPP trademarks in their entirety, with the addition of descriptive terms, such as “2020”, “box(es)”, “grand”, “battle”, “bonus”, “boom”, “cash”, “club”, “fun”, “gift”, “good”, “like”, “live”, “love”, “nice”, “open”, “prize(s)”, “rus”, “russia”, “legend”, “man”, “new”, “yes” or the letter “x”. The addition of the descriptive terms or letters does not prevent a finding of confusing similarity with the Complainants’ trademarks, each of which remains clearly recognizable in each of the disputed domain names. Moreover, the presence of hyphens in several of the disputed domain names does not eliminate the resulting confusion – rather, in many instances the hyphens only serve to render the Complainant’s trademarks more visible by separating them from other elements present in the disputed domain names. The applicable generic Top-Level Domains (the “gTLD”) “.club”, “.top”, and “.xyz” are viewed as standard registration requirements and as such may be disregarded under the first element confusing similarity test. The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not using the disputed domain names in connection with any bona fide offering of goods or services. The Respondents are not a licensee of the Complainants, nor have the Respondents been otherwise authorized by the Complainants to make any use of the Complainants’ trademarks in the disputed domain names or otherwise. At the time of filing of the complaint the disputed domain names do not resolve to active webpages, and such non-use does not amount to use of a domain name in connection with any bona fide offering of goods or services. The Respondents cannot legitimately claim to be commonly known by the disputed domain names, or a name corresponding to the disputed domain names. The Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers. At present, the Respondents do not appear to be making any active use of the disputed domain names whatsoever. The Respondents are not making any use of the disputed domain names in connection with any descriptive meaning that could be ascribed to the disputed domain names, independent of the Complainants’ trademarks. The disputed domain names were registered and are being used in bad faith. Given the Complainants’ renown and goodwill worldwide, the Respondents could not credibly claim not to have had knowledge of the Complainants’ INSTAGRAM, INSTA, and WHATSAPP trademarks at the time of registration of the disputed domain names. Actual knowledge of INSTAGRAM may be inferred from the Respondent’s previous use of the disputed domain names The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreements for the disputed domain names is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainants in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondents are able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainants have submitted a request that the language of the proceedings be English. The Complainants contend that the Respondents must be familiar with the English language since among others (i) the disputed domain names are composed of Latin script (i.e. not Cyrillic) and identically reproduce the Complainant’s trademarks, (ii) many of the disputed domain names include the English terms such as “box(es)”, “grand”, “battle”, “bonus”, “boom”, “cash”, “club”, “fun”, “gift”, “good”, “like”, “live”, “love”, “nice”, “open”, “prize(s)”, “legend”, “man”, “new”, “yes”, and “login”. The Complainants also believe that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainants would be unfairly disadvantaged by being forced to translate the Complaint to Russian. The Panel further notes that no objection was made by the Respondents to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondents in Russian and English that the Respondents are invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondents by a certain date, the Center would proceed on the basis that the Respondents had no objection to the Complainants’ request that English be the language of the proceedings. The Respondents had the opportunity to raise objections or make known its preference but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Consolidation of Complainants Section 4.11.1 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple complainants, in part, as follows: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (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.” The Complainants assert they are related corporate entities and have a common legal interest sufficient to justify consolidation. There is no reason to require each of them to submit an almost identical complaint against the Respondents with nearly identical facts, legal arguments and requested relief. Moreover, the Respondents will not suffer any prejudice, and consolidation will not affect the Respondents rights in responding to the Complaint. The Complainants have been the target of common conduct by the Respondents, consisting of a pattern of abusive domain name registration reproducing their respective trademarks in domain names, which has affected their individual rights and interests in a similar fashion. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate. Hereafter, the Panel will refer to the Complainants as the “Complainant”. C. Consolidation of Respondents The Complainant requested the Panel to hear the present dispute brought against two Respondents as a consolidated Complaint. Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, since the disputed domain names are subject to common control by either the same person or connected parties. This is confirmed by the fact that the disputed domain names were registered within a short period of time by individuals in the Russian Federation using the same Registrar and similar contact details and having same name servers referring to the trademarks owned by the Complainant. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as the “Respondent”. D. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLDs “.club”, “.top”, and “.xyz” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case the Panel finds that the disputed domain names incorporate the entirety of the respective Complainant’s trademarks. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In the present case the panel finds that the addition of terms “box(es)”, “grand”, “battle”, “bonus”, “boom”, “cash”, “club”, “fun”, “gift”, “good”, “like”, “live”, “love”, “nice”, “open”, “prize(s)”, “rus”, “russia”, “legend”, “man”, “new”, “yes”, number “2020” or the letter “x”, as well as hyphens do not prevent establishing the confusing similarity. Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademarks, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. E. Rights or Legitimate Interests Noting the facts and arguments set out above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The disputed domain names The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names resolving to inactive websites (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Noting the risk of implied affiliation between the disputed domain names and the well-known trademarks of the Complainant, based on the nature of the disputed domain names, the Panel finds that there is no plausible fair use to which the disputed domain names could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,WIPO Case No. D2019-2897). Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. F. Registered and Used in Bad Faith According to section 3.1.4 of the WIPO Overview 3.0 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. The Panel is convinced that the Complainant’s trademarks are well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademarks near worldwide. Thus, the Panel finds that the disputed domain names confusingly similar to the Complainant’s trademarks were registered in bad faith. According to paragraph 4(b)(iv) 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: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In this case, the disputed domain names According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel finds that the disputed domain names, which have not been used were also registered and used in bad faith, taking into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademarks, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the disputed domain names may be put. Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case 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 disputed domain names, Taras Kyslyy
Sole Panelist
Date: June 8, 2021
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