The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Alan Gokoglu, Australia. 2. The Domain Name and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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 30, 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 May 5, 2021 receipt by Center. 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021. The Center appointed Knud Wallberg as the sole panelist in this matter on June 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 is an online social networking platform. The Complainant currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. According to the web information company Alexa the Complainant´s website available at “www.instagram.com” is ranked as the 25th most visited website in the world, 17th in Colombia and 16th in Turkey, where the Respondent is based. The Complainant is the owner of the trademark INSTAGRAM, which is registered in a large number of jurisdictions including International Registration No. 1129314, registered on March 15, 2012 for goods and services in International Classes 9 and 42 and 45, in which Australia is designated. The Complainant is also the owner of numerous domain names consisting of the term INSTAGRAM under generic and country code Top-Level Domain (“gTLD” and “ccTLD”, respectively) extensions. The disputed domain name The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. The disputed domain name The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks. The Complainant further asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, to demonstrate rights or legitimate interests in the disputed domain names just as there is no evidence to suggest that the Respondent is commonly known by the disputed domain names or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Complainant specifically points out, that prior to its suspension by the Registrar at the Complainant’s request, the Domain Name was resolving to a parking page displaying PPC links, which cannot constitute a bona fide offering of goods or services as the Respondent was seeking to profit from the Complainant’s goodwill and renown to attract Internet users to its website for financial gain. Such conduct cannot confer rights or legitimate interests on the Respondent where the Respondent is seeking to unfairly capitalize on the goodwill associated with the Complainant’s trademark. Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. Given the Complainant’s renown and goodwill worldwide, it is inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s trademark when it registered the disputed domain name in 2020. The Complainant further contends that the Respondent’s previous use of the disputed domain name was clearly intended for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy, as it was pointing to an advertising website displaying PPC links. Such use, from which the Respondent was seeking to obtain financial gain derived from the goodwill and reputation attached to the Complainant’s trademark, constitutes strong evidence of bad faith. The fact that the disputed domain name has been suspended further to the Complainant’s request does not cure the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark. The disputed domain name 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 name. 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 name 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 (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. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademark INSTAGRAM, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name 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 name 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 name was registered in bad faith. Given the above-described prior use of the disputed domain name, it is equally evident that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these websites. The fact that the disputed domain name is currently suspended by the concerned Registrar at the request of the Complainant, does not alter this finding. The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled for the disputed domain name 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 name, Knud Wallberg
Sole Panelist
Date: June 21, 2021
Full & Egal Universal Law Academy