The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Aleksandr Guzenin, Private Person, Kazakhstan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 20, 2021, the Center transmitted an email to the parties in English and Russian regarding the language of the proceedings. On April 20, 2021 the Complainant submitted its request that English be the language of the proceedings re-iterating the request provided in the Complaint. 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 Respondent of the Complaint in English and Russian, and the proceedings commenced on April 28, 2021. On April 28, 2021 the Center received the Respondent's communication indicating that it is willing to transfer the disputed domain name. On April 29, 2021, the Center sent the Parties a communication regarding a possible settlement, but no suspension was requested by the Complainant. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. The Respondent did not submit any formal response. The Center notified the Parties of the commencement of panel appointment process on May 19, 2021. The Center appointed Kateryna Oliinyk as the sole panelist in this matter on May 28, 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 develops Instagram, a web-based mobile application that enables users to share pictures and videos with their friends and others. The Complainant’s web-based mobile application is compatible with Apple iOS, Android, and Windows Phone devices. The company was incorporated in 2010 and is based in San Francisco, California. As of August 2012, Instagram, Inc. operates as a subsidiary of Facebook, Inc. Since its launch in 2010, the Complainant 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. Currently, the social network has about 1 billion active users. As of February 2019, around 36.1% of entire population of Kazakhstan were Instagram users. As of November 2020, the Complainant’s mobile application was among top 5 applications for iPhone on the iOS App Store. The Complainant also registers domain names consisting of or including its INSTAGRAM trade mark under a wide range of generic Top-Level Domains (“gTLDs”) as well as under country code Top-Level Domains (“ccTLDs”), including the following: Domain name Registration date June 4, 2004 January 14, 2011 November 13, 2012 The Complainant holds accounts in social media forums, including Facebook, Twitter, and LinkedIn. The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including, for instance, the following trademark registrations: - Kazakh Trade mark No. 53665 INSTAGRAM, registered on October 4, 2016; The disputed domain name was registered on March 31, 2019 and resolved to a web page directing the Internet users to click on a link to confirm that they were over 18. Clicking on this link, Internet users were redirected to a third-party website providing adult content. At the time of submission of the Complaint and administrative proceedings, the disputed domain name does not resolve to an active website. On March 17, 2021, the Complainant sent a cease-and-desist letter by registered post and e-mail asking to transfer the disputed domain name to the Complainant. No response followed. 5. Parties’ Contentions A. Complainant In accordance with paragraph 11 of the UDRP Rules, the Complainant ascertains that the Respondent has a more than adequate knowledge of the English language. In support of this allegation, the Complainant puts forward the following circumstances to justify its request for English to be the language of this proceeding: - the disputed domain name has been registered under the gTLD “.org”; In terms of the substantive discussion, the Complainant argues the following: i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights The Complainant has established trademark rights in INSTAGRAM for the purposes of paragraph 4(a)(i) of the Policy by numerous trademark registrations for INSTAGRAM in jurisdictions. The disputed domain name is a typosquatted version of the Complainant’s INSTAGRAM trademark. The only difference between the disputed domain name and the Complainant’s trademark INSTAGRAM is the mere substitution of the letter “i” with the letter “l”. When written in lower case the element “lnstagram” appears visually similar to the Complainant’s trademark INSTAGRAM, written with the capital letter “i”. The Complainant contends that the disputed domain name is confusingly similar with the Complainant's trademark INSTAGRAM. ii) The Respondent has no rights to or legitimate interests in the disputed domain name. That the Respondent has no affiliation with the Complainant. The Complainant submits that the Respondent is not using 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. The Complainant further contends that redirection to a website that provides adult content is not considered by prior panels as a bona fide offering of goods and services. The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its trademark INSTAGRAM, in a domain name or otherwise. The Respondent in the WhoIs record is listed as Aleksandr Guzenin, which bears no resemblance to the disputed domain name whatsoever. Furthermore, the disputed domain name is not being used in the promotion of any business or any other online service that might give rise to the Respondent being commonly known by the disputed domain name. Thus, the Complainant contends that the Respondent in not commonly known under the disputed domain name and has no rights to or legitimate interest in the disputed domain name. iii) The disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent attempted to take commercial advantage of the Complainant's trademarks and reputation, as well as to trade off the Complainant's goodwill. That the Respondent has not used the disputed domain name for any legitimate purpose. Given the Complainant’s highly distinctive and famous trademark INSTAGRAM, it is unlikely that the Respondent could have registered the disputed domain name for any legitimate reason. The previous use of the disputed domain name to promote adult content, obviously for commercial gain, by creating confusion with the Complainant constitutes bad faith under paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name ceased to resolve following the Complainant’s cease and desist letter underlines the Respondent’s bad faith. The fact that the disputed domain name no longer resolves does not prevent a finding of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. On April 28, 2021, the Respondent expressed willingness to transfer the disputed domain name. However, the Complainant did not confirm a request to settle. 6. Discussion and Findings 6.1. Language of the proceedings Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. In the absence of an agreement between the Parties, the Panel may in its sole discretion, having regard to the circumstances of the proceeding, decide that the language of the proceeding will be different than the language of the Registration Agreement for the disputed domain name. Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. There is no agreement between the parties pertaining to the language of the proceedings. Furthermore, it is undisputed in the case at hand that the language of the registration agreement is Russian. The Complainant duly filed a request that the language of the proceeding be English. The Respondent failed to comment on or object to this request, despite the Center’s invitation to do so, expressed in Russian as well as in English, such invitation having been sent to the Respondent on April 20, 2021. In the present case, the Panel is satisfied that the Respondent has more than an adequate knowledge of the English language so that proceeding in English is fair and equal. This conclusion is based on the following facts, which result from the following Panel’s findings: - the disputed domain name was registered under gTLD “.org”; - the disputed domain name consists of a misspelling of the Complainant's trademark INSTAGRAM, which is a distinctive term in English; - the website previously associated with the disputed domain name was available in English and it may be anticipated that the Respondent was targeting English speakers. In addition, the Panel notes that requesting a translation of the Complaint will cause undue delay of these proceedings and therefore be inequitable for both parties and contrary to the obligation to proceed with the proceeding with due expedition. Therefore, having regard to the above circumstances, the Panel accepts in its sole discretion that the language of the proceeding will be English and therefore different from the language of the registration agreement for the disputed domain name. 6.2. Consent to transfer As noted above, the Respondent has expressed a willingness to transfer the disputed domain name to the Complainant. “[A] genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (See The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132. See also paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). Nevertheless, taking into account the fact that the Respondent did not reply to the Complainant’s cease-and-desist letter before the filing of these proceedings, the Panel finds that there is ambiguity as to the genuineness of the Respondent’s consent. Furthermore, the Panel notes that the Complainant has not agreed to a consent decision and finds the Complainant is entitled to a decision on the merits, the Panel finds a broader interest in reaching and recording a substantive determination, specifically in connection with patterns of conduct under paragraph 4(b)(iv) of the UDRP. 6.3. Substantive Determination A. Identical or Confusingly Similar The Complainant undoubtedly has rights in the trademark INSTAGRAM. The trademark is subject to registrations that predate registration of the disputed domain name, and has been in widespread use for many years. The gTLD “.org” may be disregarded for the purpose of comparing the disputed domain name with the Complainant’s mark under paragraph 4(a)(i) of the Policy as in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). According to section 1.9. of the of the WIPO Overview 3.0 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers. The Panel has established that the disputed domain name is a typosquatted version of the Complainant's INSTAGRAM trademark. The only difference between the disputed domain name and the Complainant's trademark INSTAGRAM is the mere substitution of the letter “i” with the letter “l”. That makes the disputed domain name and the Complainant’s trademark INSTAGRAM confusingly similar, as this difference may be easily overlooked by an Internet user. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy. B. Rights or Legitimate Interests The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complaint established that, among other things, that (1) the Complainant has never authorized the Respondent to use the trademark INSTAGRAM in the disputed domain name, nor has the Complainant ever acquiesced to such use, (2) the Respondent is not commonly known under the disputed domain name, and (3) the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. These assertions establish the Complainant’s prima facie case. The Complaint shows that the disputed domain name redirected to the website with the adult content, and further was held passively by the Respondent. This was done for the commercial gain which cannot be considered as fair use inasmuch as the only reason to use the trademark as a domain name is to attract customers who were not looking for a website with adult content, but were instead looking for products or services associated with the Complainant’s trademark INSTAGRAM (see AREVA Société Anonyme à Directoire et Conseil de Surveillance v. wangyongqiang,WIPO Case No. D2016-1100 “The Panel does not find the Respondent's use of the Disputed Domain Name to host an adult-content website to be bona fide, legitimate noncommercial or fair use.”; Motorola Inc. v. NewGate Internet Inc.,WIPO Case No. D2000-0079). The Respondent has not replied to the Complainant’s contentions or rebutted the above, to the contrary, the Respondent has indicated a lack of interest in maintaining the disputed domain name. In light of the aforesaid, the Panel finds that the Complainant has satisfied this second Policy element. C. 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 trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and goodwill in its trademark near worldwide. Because the Complainant’s trademark INSTAGRAM has a high degree of awareness among the public, it is implausible to believe that the Respondent was not aware of that mark when he registered the disputed domain name. Furthermore, the nature of the disputed domain name, comprising a typo of the Complainant’s widely-known trademark, affirms a finding of bad faith registration. Bad faith use is clear from the Respondent using the disputed domain name to redirect Internet users to a commercial website displaying adult content. That the disputed domain name is currently inactive does not prevent a finding of bad faith. In light of the aforesaid, the Panel establishes that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, 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. Thus the Panel finds that the previous use of the disputed domain name to promote adult content, obviously for commercial gain, by creating confusion with the Complainant constitutes bad faith under paragraph 4(b)(iv) of the Policy (see Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022). Furthermore, prior panels deciding under the Policy have held that the use of domain names incorporating third party trademarks to lead to websites containing adult websites is very likely to tarnish the distinctiveness, image, and reputation of trade mark owners. (See Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a "Nelly" v. Patrick Vanderhorst,WIPO Case No. D2005-0636). Thus, the previous use constitutes one of the indicia of bad faith in the context of the present discussion. Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). The Respondent also failed to respond to the Complainant’s cease-and-desist letter, and did not provide any good reason to justify this, which affirms its bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). Considering the above, the Panel finds the disputed domain name was registered and is 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 name Kateryna Oliinyk
- Kazakh Trade mark No. 61809 INSTAGRAM, registered on October 25, 2018; and
- International Trade mark No. 1129314 INSTAGRAM, registered on March 15, 2012.
- the disputed domain name consists of a misspelling of the Complainant's INSTAGRAM trade mark, which is a distinctive term in English;
- the website previously associated with the disputed domain name was available in English and therefore the Respondent was targeting English speakers;
- it would be disproportionate to require the Complainant not to submit the Complaint in English as this would result in additional expense and unnecessary delay for the Complainant for translation.
Sole Panelist
Date: June 18, 2021
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