The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Ester Poly, Neozoon, Poland. 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 12, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 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. 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, and the proceedings commenced on May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on July 19, 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 photo -and video- sharing social networking application. Since it was launched in 2010, the application rapidly developed considerable goodwill and renown worldwide, with 100,000 users in only one week, 1 million registered users in only two months (by December 21, 2010) and over 10 million registered users by September 2011, less than a year after it was launched. 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 26th most visited website in the world, according to web information company Alexa. The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including, for instance the United States Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012. The disputed domain name was registered on September 23, 2012, and resolves to a web page with sponsored links. It also contains a link stating “Buy this domain” which leads to a page promoting domain name broker services. The Complainant sent a cease-and-desist letter to the Respondent on February 8, 2021 by email, as well as on February 9, 2021 via the online contact form associated with the email address info@domain-contact.org, both communications were ignored by the Respondent (Annex 11 to the Complaint). The Respondent’s details used to be or currently are associated with many domain names incorporating widely-known trademarks owned by third parties. The Respondent was involved in at least one previous domain name proceeding where the panel ordered the transfer of the disputed domain name to the complainant, see Skyscanner Limited v. MR Zia Mody, Neozoon,WIPO Case No. D2020-0421. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety with addition of the prefix “www-”. The combination of the Complainant’s trademark together with the prefix “www-“ does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, which remains clearly recognizable in the disputed domain name. The applicable generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of assessment under the first element, as it is viewed as standard registration requirement. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is pointing to a website containing sponsored links. Such use of the disputed domain name cannot possibly be considered a bona fide offering of goods or services as the Respondent is clearly seeking to unduly profit from the Complainant’s goodwill for his own financial gain. The Respondent is not a licensee of the Complainant, nor has it been otherwise authorised or allowed by the Complainant to make any use of its trademark, in a domain name or otherwise. The Respondent cannot credibly claim that it is commonly known by the disputed domain name. The Respondent does not appear to have acquired any trademark rights in the term “instagram” as reflected in the disputed domain name that would confer any rights or legitimate interests on the Respondent. The Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the disputed domain name is pointing to a website containing pay-per-click links that is clearly commercial in nature and from which the Respondent (or a third party) is undoubtedly obtaining financial gain. The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is inherently distinctive and well-known throughout the world and has been continuously and extensively used since its launch in 2010, and rapidly acquired considerable goodwill and renown worldwide. Thus it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s trademark at the time of registration of the disputed domain name in 2012. The Respondent has engaged in a pattern of conduct by registering multiple domain names for the purpose of preventing the owners of the trademarks from reflecting their trademarks in corresponding domain names. The Respondent’s use of the disputed domain name is intended for commercial gain, as it is pointing to an advertising website displaying pay-per-click links, some of which target the Complainant’s trademark. Given the nature of the disputed domain name, including the Complainant’s trademark merely preceded by the element “www-“, the Respondent is clearly trying to take unfair advantage of Internet users who make a typing mistake when trying to reach the Complainant’s official website. The Respondent’s failure to respond to the Complainant’s cease-and-desist letter is an additional indication of the Respondent’s bad faith. Also, the Respondent’s contact details in the WhoIs are most probably false. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (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 “.com” 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 disputed domain name incorporates the entirety of the Complainant’s trademark. 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”. The Panel finds that the Complainant’s trademark is recognizable within the disputed domain names and the addition of term “www-” does not preclude establishing the confusing similarity. Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right 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 registered trademark by the Respondent, and no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875). According to section 2.9 of the WIPO Overview 3.0 “the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The Panel finds this applies to the present case. Noting the high risk of implied affiliation between the disputed domain name and the identical well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name 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 name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. 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 level of goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith. The disputed domain name includes the Complainant’s trademark merely preceded by the element “www-“, which shows the Respondent attempt to take unfair advantage of Internet users who make a typing mistake when trying to reach the Complainant’s official website, which confirms the bad faith registration (see, e.g. Philip Morris USA Inc. v. Private Registration / tongliang wang,WIPO Case No. D2019-1041). According to section 3.1 of the WIPO Overview 3.0, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 In this regard, the Panel finds that at least the first of the above scenarios apply to the present case confirming the Respondent’s bad faith. The Respondent failed to respond to the Complainant’s cease-and-desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). Considering the above, the Panel finds that both 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, Taras Kyslyy
(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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, 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”.
Sole Panelist
Date: July 27, 2021
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