The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domains By Proxy, LLC, United States / Ahmed Hemaid, Palestine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 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 May 12, 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 17, 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2021. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on June 22, 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 a world-renowned online photo- and video-sharing social networking application launched in 2010. The application and services are rendered under the name “Instagram”. The trademark INSTAGRAM has been recognized as a leading global brand. The Complainant is the owner of various registrations worldwide for the trademark INSTAGRAM, including United States trademark registration number 4,146,057 registered on May 22, 2012 in class 9 and European Union trademark registration number 014493886 registered on December 24, 2015 in classes 25, 35, 38, 41 and 45. The Complainant owns the domain name The Respondent registered the disputed domain name on December 2, 2016. The disputed domain name used to resolve to a website purporting to offer a tool for downloading videos and photos from Instagram. Such website displayed a modified version of one of the Complainant’s figurative trademark in the browser tab, and included a link to a third party’s website with adult content. A disclaimer was displayed in fine print at the bottom of the web page stating “Not affiliated with Instagram & we don't host any of the Instagram Photos on this website, all rights belong to their respective owners.” The Complainant sent a cease and desist letter by email on October 20, 2020 to the Respondent through the privacy service with which the disputed domain name was registered, as well as to the email address available on the Respondent’s website. The Complainant notified the Respondent of its trademark rights and requested the voluntary transfer of the disputed domain name. The Respondent did not reply. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name reproduces its famous INSTAGRAM trademark in its entirety, that such trademark is readily recognizable so that the adjunction of the term “downloader” does nothing to reduce its confusing similarity with the INSTAGRAM trademark. The Complainant has not licensed or otherwise permitted the Respondent to use the INSTAGRAM trademark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain name. The Complainant argues that the website related to the disputed domain name offers a tool for downloading photos and videos from Instagram and displays a modified version of Complainant’s favicon in the browser tab. According to the Complainant, it is clear that the choice of the famous INSTAGRAM trademark and the use of the disputed domain name to resolve to such a website aims at creating a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy. In addition, the Complainant alleges that given its worldwide reputation and the ubiquitous presence of the INSTAGRAM trademark on the Internet, the Respondent was aware of the INSTAGRAM trademark long before registering the disputed domain name and the use of this disputed domain name to resolve to such a website constitutes registration and use in bad faith. The Complainant contends also in this respect that websites allowing the downloading of photos and videos available on Instagram may be used as a way of hacking into Instagram users’ accounts for nefarious purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns various trademark registrations for the mark INSTAGRAM. The disputed domain name As a rule, UDPR panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the trademark INSTAGRAM is clearly recognizable in the disputed domain name. The mere addition of “downloader” and a hyphen does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.net”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. Furthermore, the use of the disputed domain name in connection to a website that offers a tool for downloading videos and photos from Instagram shows that the Respondent targets the Complainant. The use on this website of a favicon that is similar to the Complainant’s icon further supports the apparent lack of rights or legitimate interests of the Respondent in the disputed domain name. Indeed, impersonating the Complainant or make it appear that there is a link with it can hardly be a legitimate or fair use. In addition, the Respondent’s website displays a link to a third party’s website with adult content, which suggests that the Respondent derived a commercial gain from the use of the disputed domain name. Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the distinctive and well-known character of the INSTAGRAM trademark, the Panel accepts that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name in December 2016. The Respondent therefore registered the disputed domain name in bad faith. The Respondent’s website connected to the disputed domain name allowed Iinternet users to download photos and videos from Instagram. In addition, it used as a favicon an icon that is similar to one of the Complainant on the browser tab of the Instagram website. The Panel finds that in using the disputed domain name in connection with such a website, the Respondent intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and the services offered therein, in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. Furthermore, websites allowing the downloading of photos and videos available on Instagram may be used as a way of hacking into Instagram users’ accounts for nefarious purposes. Besides, the Respondent’s website displays a link to a third party website with adult content. What commercial gain the Respondent may have derived from such use of the disputed domain name is not known, but the Panel finds it likely that the Respondent received, or hoped to receive, pay-per-click fees or advertising commissions for redirecting the disputed domain name to such website. Moreover, the Panel finds that such link to a pornographic website is likely to tarnish the distinctiveness, image and reputation of the Complainant (see Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a "Nelly" v. Patrick Vanderhorst,WIPO Case No. D2005-0636). Finally, where the overall circumstances of a case point to the respondent’s bad faith, the mere presence of a disclaimer is not sufficient to cure bad faith (see section 3.7 of WIPO Overview 3.0). The Panel accepts therefore that the disputed domain name has been used in bad faith. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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, Anne-Virginie La Spada
Sole Panelist
Date: July 6, 2021
Full & Egal Universal Law Academy