Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Rochelle Burrell, United States. 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 27, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 27, 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 Complainant on April 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 5, 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 Respondent of the Complaint, and the proceedings commenced on May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2021. The Center appointed Frederick M. Abbott 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 Complainant is the owner of numerous registrations for the trademark INSTAGRAM in jurisdictions around the world, including registration as a word trademark on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4146057, registration dated May 22, 2012, in international class (IC) 9, covering downloadable computer software for modifying the appearance and enabling transmission of photographs. Complainant is the owner of registration for the word trademark INSTAGRAM on the register of the European Union Intellectual Property Office (EUIPO), registration number 014493886 registration dated December 24, 2015 in ICs 25, 35, 38, 41 and 45, covering various goods and services, including photo sharing and video sharing services. Complainant is the owner of International Registration for the word trademark INSTAGRAM under the Madrid System, registration number 1129314 registration dated March 15, 2012, designating a number of countries, in ICs 9 and 42. Complainant operates a widely-used online photo-and video-sharing social-networking application, with more than 1 billion monthly active accounts worldwide. Complainant operates a commercial website at “www.instagram.com” that is currently ranked by Alexa as the 25th most visited website in the world. According to the Registrar’s verification, Respondent is registrant of the 73 disputed domain names in this proceeding. According to that verification, 53 of the disputed domain names were registered on November 2, 2020, and 20 of the disputed domain names were registered on November 8, 2020. There is no evidence on the record of this proceeding that any party other than Respondent has owned the aforesaid registrations for the 73 disputed domain names. It does not appear that Respondent has directed any of the 73 disputed domain names to an active website with Respondent-provided content. The 73 disputed domain names have been directed to the website of “Domains Priced Right” that offers domain name registration services. According to Complainant, Domains Priced Right is a company forming part of the same corporate group as the Registrar. The registration agreements between Respondent and the Registrar subject Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademark INSTAGRAM and that each of the disputed domain names is confusingly similar to that trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent is not using the disputed domain names in connection with bona fide offerings of goods or services; (2) Respondent has not been commonly known by the disputed domain names, and; (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent must have been aware of Complainant’s rights in its trademark when Respondent registered the disputed domain names; (2) Respondent’s targeting of Complainant’s distinctive and well-known trademark can be inferred from the registration of 73 disputed domain names that incorporate Complainant’s trademark; (3) such targeting indicates that Respondent intended to prevent Complainant from registering its trademark in the corresponding disputed domain names, and constitutes a pattern of such conduct; (4) Respondent’s lack of substantive use of the disputed domain names is similar to “passive holding”, which in the circumstances of this proceeding evidences bad faith. Based on the confusing similarity between the disputed domain names and Complainant’s well-known trademark, Respondent may have intended to use the disputed domain names for the purpose of engaging in fraudulent schemes involving deceptive email addresses. Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier delivery could not be completed because it is “[a]waiting collection by recipient”. There is no evidence on the record of the proceeding as to whether email notice was received by Respondent at the contact information it provided. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar Complainant has provided substantial evidence of rights in the trademark INSTAGRAM, including by registration at the USPTO, EUIPO and under the Madrid System, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the INSTAGRAM trademark. Each of the 73 disputed domain names fully incorporates Complainant’s INSTAGRAM trademark as its initial term. Each of the disputed domain names adds an additional common term or terms, such as “bedding” or “home loans”, and/or a commonly known abbreviation such as “ipos” or “mlb”,1 followed by the generic Top-Level Domain (“gTLD”) “.com”. Under the circumstances of this proceeding, it is sufficient for a finding of confusing similarity that Complainant’s distinctive and well-known INSTAGRAM trademark is readily identifiable within each of the 73 disputed domain names, and the Panel does not consider any of the additional terms that follow the INSTAGRAM trademark to preclude or otherwise interfere with a finding in each case of confusing similarity with the trademark.2 The Panel determines that Complainant owns rights in the INSTAGRAM trademark and that each of the 73 disputed domain names are confusingly similar to that trademark. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in each of the disputed domain names are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in each of the disputed domain names. Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Respondent has not provided any evidence of preparations that might entail bona fide use of any of the disputed domain names, or any plausible basis for establishing actual bona fide use. Respondent has not provided any evidence that it has been commonly known by any of the disputed domain names, or that it has established trademark rights in respect to Complainant’s INSTAGRAM trademark. Respondent has not engaged in legitimate noncommercial or fair use of the disputed domain names. Respondent’s passive holding of each of the disputed domain names in the circumstances present here does not establish rights or legitimate interests in favor of Respondent. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), 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”. These include, “(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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct”. Respondent registered 73 disputed domain names each of which fully incorporates Complainant’s distinctive and well-known INSTAGRAM trademark, followed by a common term or terms, and/or a commonly known abbreviation. Respondent must have known of Complainant’s rights in its trademark when it undertook those registrations. Respondent’s conduct evidences bad faith in several ways. Respondent has not suggested to the Panel a plausible basis for making legitimate use of any of the 73 disputed domain names. The Panel does not discern potential legitimate use on the face of the disputed domain names, and it is not the duty of the Panel to engage in a highly speculative exercise regarding what such a legitimate use might be. Given the absence of a potential legitimate use, Respondent reasonably can be inferred to have intended to offer any and all of the disputed domain names for sale to a third party(ies) for a price in excess of its out-of-pocket expenses directly related to those disputed domain names. The registration of 73 disputed domain names incorporating Complainant’s distinctive and well-known trademark indicates Respondent’s deliberate targeting of that trademark. By combining Complainant’s trademark with additional common terms, Respondent reasonably can be inferred to have intended to prevent Complainant from registering its trademark in some or all of the 73 disputed domain names, establishing a pattern of such conduct. Respondent has registered of a substantial number of disputed domain names that incorporate common terms that email recipients might expect to be associated with Complainant and its business. This establishes a meaningful risk that Respondent intends to use any or all of the disputed domain names in deceptive email schemes to defraud Internet users and/or Complainant. Because such email schemes are typically uncovered only after the fact, allowing Respondent to passively maintain a large block of disputed domain names incorporating Complainant’s well-known trademark represents an ongoing risk to Complainant and Internet users who might be victimized by such schemes. Fraudulent schemes using confusingly similar domain names in email addresses are today a common and problematic phenomenon affecting the economic and goodwill interests of Internet users and trademark owners. Based on the foregoing combination of factors, the Panel determines that Respondent registered and is using each of the 73 disputed domain names in bad faith within the meaning 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 Frederick M. Abbott 1 The Panel notes that “MLB” is a customary reference to “Major League Baseball”. 2 The Panel does not consider it necessary to specifically discuss each of the 73 disputed domain names as there is nothing to suggest that there is a material distinction from the standpoint of the confusing similarity analysis.
Sole Panelist
Date: June 10, 2021
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